• Will the examiner be expected to get a translation of a foreign priority document of a U.S. patent or U.S. patent application publication when using the U.S. patent or U.S. patent application publication as prior art under 35 U.S.C. 102(a)(2)? (Question: FITF1420)

    Non-English language documents being relied upon in a rejection must be translated if a translation is necessary for the record to be clear as to the facts relied upon to support the examiner’s rejection. See MPEP § 706.02 (section II) and Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 11063 (Feb. 14, 2013) (response to comment 14). This is a case-by-case determination.

  • When is a U.S. patent or a published U.S. or PCT application available as prior art? (Question: FITF1145)

    A U.S. patent, a published U.S. application, or a published PCT application designating the United States is available as prior art on the date that the U.S. patent or published application is “effectively filed.”  The date that a U.S. patent or U.S. or PCT published application is “effectively filed” is the earlier of:  (i) the actual filing date of the U.S. patent or U.S. or PCT published application; or (ii) the filing date of the earliest application to which the U.S. patent or U.S. or PCT published application is entitled to claim a right of foreign priority or domestic benefit, and which describes the subject matter.

  • What is the effective filing date of a claimed invention in a nonprovisional application filed on March 17, 2014 claiming priority to a foreign application filed on March 17, 2013? (Question: FITF1138)

    The effective filing date of a claimed invention in the nonprovisional application is March 17, 2013, only if the claimed invention is fully supported by the foreign priority application.  The filing date of the foreign priority application can be the effective filing date for an invention claimed in an AIA (FITF) application if the subject matter of the claim is fully supported in the foreign priority application.

  • What is the effective filing date for a nonprovisional application filed on March 1, 2013 claiming priority to a foreign application filed on March 1, 2012? (Question: FITF1135)

    The effective filing date of the nonprovisional application is March 1, 2013.  The filing date of the foreign priority application is not the effective filing date for an invention claimed in a pre-AIA (FTI) application, but the foreign priority date may be used to overcome certain prior art (e.g., pre-AIA 35 U.S.C. 102 (a)).

  • What is the "effectively filed" date for a non-English PCT application publication being applied as prior art under 35 U.S.C. 102(a)(2)? Are there language requirements for applying a published PCT application as prior art under 35 U.S.C. 102(a)(2)? (Question: FITF1310)

    As long as the PCT application designates the United States, there is no requirement under the AIA that the PCT application be published in English in order for the published PCT application to be applied as of its effectively filed date under 35 U.S.C. 102(a)(2). For PCT applications filed on or after January 1, 2004, the filing of a PCT application will automatically constitute the designation of all contracting countries to the PCT, unless the applicant specifically chooses not to designate a particular contracting country.  See MPEP § 1801.  In addition, there is no critical date under the AIA with regard to the international filing date for the WIPO published PCT application to be available as prior art under 35 U.S.C. 102(a)(2).

    The effectively filed date of any subject matter disclosed in a published PCT application that designates the United States is the earlier of:

    1. the actual filing date o the PCT application or
    2. the filing date of the earliest application to which the PCT application is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter.
  • What does "deemed published" in AIA 35 U.S.C. 102(a)(2) mean? (Question: 1230)

    Under 35 U.S.C. 374,  the WIPO publication of a PCT application designating the United States shall be “deemed” a publication under 35 U.S.C. 122(b).  The term “deemed published” in AIA 35 U.S.C. 102(a)(2) encompasses WIPO published PCT applications that are “deemed” a publication under 35 U.S.C. 122(b) by virtue of 35 U.S.C. 374. 

  • Must priority have been perfected in order for a U.S. patent or U.S. patent application publication that claims priority to a foreign application published in a language other than English to be used as prior art under 35 U.S.C. 102(a)(2)? (Question: FITF:1410)

    Provided that the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.  A copy (certified or interim) of any priority application should be in the file of any patent or patent application publication.  However, should the examiner need a copy where it is not present the examiner may consult with the Scientific and Technical Information Center (STIC) in order to obtain a copy.

  • Is there a time limit for claiming foreign priority or domestic benefit of foreign or domestic priority and perfecting the claimed for priority? (Question: FITF1143)

    Yes, any foreign priority or domestic benefit claim must be filed within four months of the actual filing date of the application or sixteen months of the filing date of the application for which priority or benefit is claimed.  (However, this time limit does not apply to applications filed before November 29, 2000, or to design applications.)  An applicant may submit a priority or benefit claim outside this time period via petition if the delay in submitting the priority or benefit claim was unintentional.  Additionally, to perfect a foreign priority claim, an applicant must provide a certified copy of the foreign application before a patent is granted, and must provide a certified copy or interim copy of the foreign application within four months of the actual filing date of the application or within sixteen months from the filing date of the prior foreign application. 

  • Is examination under AIA (FITF) or pre-AIA (FTI) law determined by the actual or the effective filing date of the application? (Question: FITF1130)

    Whether an application filed on or after March 16, 2013 is an AIA (FITF) or a pre-AIA (FTI) application is determined by the effective filing date (as defined in 35 U.S.C. 100(i)) of the claimed invention.

  • Is an application that was filed and abandoned before March 16, 2013 but revived after March 16, 2013 subject to examination under the AIA or pre-AIA law? (Question: FITF2108)

    The filing date of an application, rather than the revival date of an application, determines whether the application is examined under AIA (FITF) or pre-AIA (FTI) law.  The application was filed before March 16, 2013, and thus remains a pre-AIA (FTI) application.  Here, the revived application is examined under pre-AIA (FTI) law because the application was filed before March 16, 2013.  The first-inventor-to-file provisions of the AIA do not apply to applications filed before March 16, 2013.

  • If an invention was made prior to March 16, 2013 but was not filed until after March 16, 2013, does the invention date matter under the AIA? (Question FITF1133)

    No, the date of the invention is irrelevant under the AIA.

  • How is the effective filing date of a claim determined for purposes of assessing whether the application should be examined under AIA (FITF) or pre-AIA (FTI) law? (Question: FITF1140)

    For an application filed on or after March 16, 2013, the effective filing date of a claimed invention is the earlier of:  (1) the actual filing date of the patent or the application for patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. See Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 11073 (Feb. 14, 2013).  A priority or benefit application must provide support under 35 U.S.C. 112(a) for a claimed invention for the application to be entitled, as to that claimed invention, to a right of priority or the benefit of the filing date of that priority or benefit application date under 35 U.S.C. 119, 120, 121, or 365.

  • How does 35 U.S.C. 120 change for AIA (FITF) applications? (Question: FITF1150)

    The AIA did not change the requirements for claiming the benefit of a prior-filed U.S. application under 35 U.S.C. 120, except that the prior-filed U.S. application need not satisfy the “best mode” requirement of 35 U.S.C. 112(a).

  • For AIA (FITF) applications, how does the addition of new matter into the application impact the effective filling date? (Question: FITF1124)

    For an application filed on or after March 16, 2013 that discloses and claims only subject matter also disclosed in a previously filed pre-AIA (FTI) application to which the application is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim that is directed to new matter would not convert the application into an AIA (FITF) application.  Introduction of new matter is prohibited by 35 U.S.C. 132(a).  Thus the application may not actually “contain” a claim to a claimed invention that is directed to new matter.  The MPEP sets forth the following process for treating amendments that are believed to introduce new matter:  (1) a new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02); and (2) amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04).  This process in the MPEP for treating amendments containing new matter, however, is purely an administrative process for handling an amendment seeking to introduce new matter in violation of 35 U.S.C. 132(a) and resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter. See Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11024, 11043 (Feb. 14, 2013) (response to comment 24).

  • For a PCT application to qualify as prior art under 35 U.S.C. 102(a)(2), does it have to designate the United States? (Question: FITF1250)

    Yes, a PCT application must designate the United States to have a prior art effect under 35 U.S.C. 102(a)(2).  However, PCT applications filed after a change to the PCT Regulations as of January 1, 2004 automatically designate all contracting countries, including the United States, unless the applicant specifically chooses not to designate a particular contracting country.

  • Does the date that subject matter is "effectively filed" under 35 U.S.C. 102(a)(2) include the filing date of any provisional application or foreign application for which priority or benefit is claimed in a U.S. patent, U.S. patent application publication, or WIPO published PCT application that designated the United States being used as prior art? (Question FITF1320)

    Yes, provided that the subject matter being relied upon is described in the provisional application or foreign application for which priority or a benefit is claimed by the U.S. patent, U.S. patent application publication, or WIPO published PCT application being used as prior art under 35 U.S.C. 102(a)(2).

  • Does an application need to be published to be prior art under AIA 35 U.S.C. 102(a)(2)? Can a nonprovisional application that contains a nonpublication request be prior art under AIA 35 U.S.C. 102(a)(2)? (Question: FITF1245)

    Unpublished applications per se are not prior art under AIA 35 U.S.C. 102(a)(2).  An application must be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).

  • Does 35 U.S.C. 102(a)(2) change the definition of a different inventive entity with the language "names another inventor"? For example, for an application naming A and B as joint inventors, would a U.S. patent, a U.S. patent application publication, or a WIPO published application naming B alone be available as prior art under 35 U.S.C. 102(a)(2)? Would a U.S. patent, a U.S. patent application publication, or a WIPO published application naming A, B, and C be available as prior art under 35 U.S.C. 102(a)(2)? (Question: FITF1220)

    A U.S. patent, a U.S. patent application publication, or a WIPO published application naming B alone would be prior art under 35 U.S.C. 102(a)(2) with respect to an application naming A and B as joint inventors.  Nevertheless, 35 U.S.C. 102(b)(2) provides an exception to 35 U.S.C. 102(a)(2) where the subject matter disclosed in a prior art reference was obtained directly or indirectly from the inventor or a joint inventor.  In this situation, from the naming of B alone on the U.S. patent, a U.S. patent application publication, or a WIPO published application the USPTO considers that the subject matter disclosed in the U.S. patent, a U.S. patent application publication, or a WIPO published application was obtained from a joint inventor (B) and therefore is not prior art.  A U.S. patent, a U.S. patent application publication, or a WIPO published application naming A, B, and C, also would be prior art under 35 U.S.C. 102(a)(2) unless the applicant shows (by way of an affidavit or declaration under 37 CFR 1.130(a)) that the subject matter in the U.S. patent, a U.S. patent application publication, or a WIPO published application being relied upon was obtained from A and/or B.  In that case, the exception under 35 U.S.C. 102(b)(2)(A) would apply.

  • Does "PCT application" mean national stage applications under 35 U.S.C. 371 and not all PCT applications? (Question: FITF1225)

    The term “PCT application” as used in the guidelines and training materials covers all PCT applications regardless of whether the PCT application enters the national stage in the United States under 35 U.S.C. 371.  A PCT application that designates the United States is not required to enter the national stage in the United States under 35 U.S.C. 371 for the WIPO publication of the PCT application to have a prior art effect under 35 U.S.C. 102(a)(2). 

  • Do the first-to-invent provisions apply to all applications filed before March 16, 2013? (Question: FITF2100)

    Yes.  The first-to-invent provisions apply to applications filed before March 16, 2013.

  • Can a provisional application qualify as prior art under 35 U.S.C. 102(a)(2)? (Question: FITF1243)

    No, provisional applications cannot qualify as prior art under 35 U.S.C. 102(a)(2) because they are not publicly available.  Provisional applications are not published and are retained in confidence, unless their benefit is claimed in an application that has been published or patented.  However, a U.S. patent, U.S. patent application publication, or WIPO published PCT application designating the United States that claims the benefit of a provisional application is prior art under 35 U.S.C. 102(a)(2) as of the filing date of the provisional application with respect to the subject matter described in the provisional application.

  • Can a patent application not yet published, but that will be published at eighteen months from its filing date, be used as prior art under 35 U.S.C. 102(a)(2)? Will provisional rejections under 35 U.S.C. 102(a)(2) be made under the assumption that the application will be published? (Question: 1240)

    A provisional rejection under 35 U.S.C. 102(a)(2) is appropriate only if the applications have at least one inventor in common or have a common assignee.  See MPEP 706.02(f)(2) (provides for provisional rejections on the basis of a copending unpublished application if the applications have at least one inventor in common or have a common assignee).

  • Does the Board track the percentage of IPRs that identify concurrent litigation? If so, what is the percentage?

    The Board does not currently track the percentage of IPRs that identify concurrent litigation.

  • Can a party to an inter partes review be sanctioned?

    Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of an inter partes review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

  • Can the parties to an inter partes review settle?

    The AIA permits the parties to an inter partes review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

  • How will the Board handle multiple proceedings such as two or more inter partes reviews on the same patent?

    Where another matter involving the same patent is before the Office during the pendency of the inter partes review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

  • Can a party to an inter partes review appeal the Board's final decision?

    Yes, a party dissatisfied with the final written decision in an inter partes review may appeal to the Federal Circuit.

  • After the Board renders a final decision in an inter partes review, do any estoppels apply against the patent owner?

    Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

  • After the Board renders a final decision in an inter partes review, do any estoppels apply against the petitioner?

    Yes, a petitioner in an inter partes review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the inter partes review. Similarly, a petitioner in an inter partes review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the inter partes review.

  • How will the Board conclude an inter partes review?

    The AIA provides that where an inter partes review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the inter partes review.

  • How long will an inter partes review take?

    An inter partes review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

  • Is an oral hearing permitted during an inter partes review?

    Yes, the AIA permits either party to a inter partes review to request an oral hearing.

  • May a party file a motion seeking relief at any time during the inter partes review proceeding?

    A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

  • During an inter partes review, how can a party seek relief?

    The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

  • What are the requirements to meet the "interest of justice" standard for discretionary discovery in an IPR and are there any Federal Circuit case citations that would be helpful to review when deciding whether to invoke this standard?

    The "interests-of-justice" standard is discussed in the "umbrella" Rules of Practice for Trials Before the Patent Trial and Appeal Board, appearing at 77 Fed. Reg. 48612, 48622 (Aug. 14, 2012). The Board's decision in IPR2012-00001, Paper No. 26, also provides guidance on the factors to consider when moving for additional discovery. This decision is available in the Representative Orders, Decisions, and Notices section of the Board's web site (http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp).

  • What type of discovery is permitted during an inter partes review?

    Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

  • Is discovery permitted during an inter partes review?

    The AIA authorizes the Office to set standards and procedures for the taking of discovery during an inter partes review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.

  • What prosecution bars could arise in an IPR?

    Prosecution bars sometimes arise in IPRs as a result of a protective order entered in concurrent district court litigation. The enforcement of such bars, including whether particular activities are covered, is left to the district court that entered the order. The Patent Trial Practice Guide provides that counsel for a party who receives confidential information in a proceeding will not be restricted by the Board from representing that party in any other proceeding or matter before the Office. See 77 Fed. Reg. 48756, 48771, para. (h) (Aug. 14, 2012).

  • How can a party to an inter partes review protect confidential information?

    The AIA provides that the file of an inter partes review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of confidential information.

  • If an inter partes review is instituted, can the petitioner file additional information?

    Yes, a petitioner may supplement information provided in the petition for inter partes review by filing motion within one month of the date trial is instituted.

  • If an inter partes review is instituted, can the patent owner amend the claims during the review?

    A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.

  • If an inter partes review is instituted, can the patent owner respond during the review?

    Yes, a patent owner may file a response after the institution of an inter partes review.

  • Can a party appeal the Board's decision whether to institute an inter partes review?

    No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.

  • Can a party request rehearing of the Board's decision denying its petition?

    Yes, a party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

  • What is the standard for instituting an inter partes review and who will decide whether the standard is met?

    The petitioner must demonstrate that there is a reasonable likelihood that he/she would prevail as to at least one of the claims challenged to trigger an inter partes review. The Patent Trial and Appeal Board will decide petitions for inter partes review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office.

  • If a patent owner asserts new claims in litigation over one year after the initial complaint for infringing other claims of the same patent, can a petitioner file for inter partes review of those newly asserted claims if petitioned within one year of the date the patent owner first asserted those new claims? If not, is there any recourse available to the third party alleged infringer with respect to the newly asserted claims other than ex parte reexamination (assume not a covered business method patent)?

    For an IPR, the applicable statute is 35 U.S.C. § 315(b), which states that an IPR may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The statute is clear that the bar is with respect to "the patent" and not specific claims of the patent. The bar does not apply to a request for joinder under subsection (c) of 35 U.S.C. 315.

  • Can a patent owner respond to a petition for an inter partes review?

    Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.

  • What statutory and regulatory requirements must a petitioner meet in a petition for an inter partes review?

    In a petition for an inter partes review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.

  • How does a party request an inter partes review?

    To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.

  • What is the fee for filing an inter partes review petition?

    The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. For petitions filed prior to March 19, 2013, the fee for filing a petition challenging the patentability of up to 20 claims is $27,200. For each additional claim challenged, there is a fee of $600.00. For petitions filed on or after March 19, 2013, the request fee is $9,000 plus a fee of $200.00 for each claim over 20, and the post-institution fee is $14,000 plus a fee of $400.00 for each claim over 15.

  • When can a petitioner bring an inter partes review for a patent?

    A petition for inter partes review cannot be filed until after the later of:
    (i) 9 months after the grant of a patent or
    (ii) the date of termination of any post-grant review of the patent.

  • Who may file for an inter partes review?

    A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for an inter partes review of the patent.

  • On what grounds may a petitioner challenge a patent in an inter partes review?

    A petitioner for inter partes review may request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

  • What patents are eligible for an inter partes review?

    All patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-invent provisions in current Title 35.

  • What is the effective date for the inter partes review provision in the AIA?

    The effective date for the inter partes review provision in the AIA is September 16, 2012.

  • Where a practitioner who represents the inventor makes an alteration to the specification, for example, an amendment to the claims, after the inventor has executed the declaration and before the application is filed, should the inventor re-execute a new declaration after reviewing the amended application?

    An inventor is not required to re-execute a new inventor's oath or declaration provided that the changes are minor, for example, correction of typographical errors, grammatical problems, and clarifying sentences. 37 CFR 1.52(c). If the changes would amount to the introduction of new matter had the change been made to a filed application, however, then the inventor should execute a new oath or declaration after reviewing the amended application. The amended rules permit alterations to the specification without the inventor re-executing an oath or declaration only where the statements in the executed declaration remain applicable. Additionally, an inventor must before executing the oath or declaration (i) review and understand the contents of the application; and (ii) be aware of his or her duty of disclosure. 37 CFR 1.63(c). If the changes made to the specification before an application is filed result in substantial alterations to the application, then an inventor may not understand the contents of the application or be aware of his/her duty to disclose information relating to the substantial alteration.

  • An applicant files a request for prioritized examination (Track I) with a new application filed on or after September 16, 2012. Is an executed inventor's oath or declaration required to be filed with the new application, even where a proper application data sheet (ADS) is filed that lists the legal name, residence, and mailing address for each inventor?

    Yes, a request for prioritized examination for an application filed after September 16, 2012, must be accompanied by an inventor's oath or declaration executed by or with respect to each named inventor. In other words, an inventor's oath or declaration cannot be postponed until the Office issues a Notice of Allowability for applications subject to prioritized examination (Track I).

  • Since the AIA has eliminated the requirement for statements of lack of deceptive intent, what will be the impact on reissue practice?

    The inventor's oath/ declaration filed in the reissue proceeding need not contain a statement that the error(s) being corrected occurred without deceptive intention, and a supplemental oath or declaration is no longer required due to the filing of an amendment.

  • According to 37 CFR 1.63(b)(2), an inventor's mailing address is where the inventor customarily receives mail. Can an inventor's mailing address be the corporation where an inventor works, for example, the address of the corporate legal department?

    Yes, if an inventor customarily receives mail at a corporate mail address, then the inventor may provide that address for his mailing address.

  • When is an applicant required to submit an inventor's oath/declaration?

    An applicant (i) may submit the inventor's oath/declaration on filing of the application; or (ii) may postpone until the Office issues a Notice of Allowability, provided that the applicant files a signed Application Data Sheet identifying the inventive entity.

  • Does the inventor's oath/declaration provision contain any timing restriction for filing an inventor' oath/declaration?

    Yes, the inventor's oath/declaration provision permits the Office to issue a Notice of Allowance in an application only if: (i) the inventor's oath/declaration is filed; (ii) a substitute statement filed in lieu of the inventor's oath/declaration; or (iii) an assignment containing the statements required for an inventor's oath/declaration is recorded in the Office for the patent application.

  • If an inventor who no longer works for the company insists on being paid before signing a declaration for an application filed after September 16, 2012, can this be considered a sufficient inventor refusal to support the use of a substitute statement?

    The AIA does not change the standard for an inventor's refusal to execute a declaration. An initial refusal to sign based on some precondition may or may not amount to an outright refusal, depending on the specific facts.

  • What evidentiary showing is an applicant required to make when filing a substitute statement?

    An applicant may sign and file a substitute statement (AIA/02 or equivalent) where an inventor refuses to sign a declaration, cannot be reached or located after diligent effort, is legally incapacitated, or is deceased. Proof of the circumstances (e.g., attempts to contact the inventor) is no longer required, but such information should be retained in an applicant's records.

  • Where an assignee is executing a substitute statement under one of the permitted circumstances, does the requirement for residence and mailing address also apply to the person signing the statement?

    Yes, where an assignee executes a substitute statement, the assignee must supply his/her residence and mailing address. If the assignee is a juristic entity, the residence and mailing address of the juristic entity should be used.

  • Who may file a substitute statement in lieu of an inventor's oath/declaration if such a statement is permitted in a patent application?

    The following applicant entities may sign a substitute statement on behalf of an inventor when such a statement is permitted in a patent application:

    (i) the inventor's legal representative under 37 CFR 1.43, where the inventor is deceased or legally incapacitated;

    (ii) the other joint inventors under 37 CFR 1.45, where the inventor refuses to sign the declaration or cannot be reached or located after diligent effort;

    (iii) the assignee or party to whom the inventor is under an obligation to assign under 37 CFR 1.46, where the inventor is deceased, legally incapacitated, refuses to sign the declaration or cannot be reached or located after diligent effort; or

    (iv) a party who otherwise shows a sufficient proprietary interest in the claimed invention under 37 CFR 1.46(b), where the inventor is deceased, legally incapacitated, refuses to sign the declaration or cannot be reached or located after diligent effort.

  • Does the inventor's oath/declaration provision permit a substitute statement in lieu of an inventor's oath/declaration?

    Yes, the inventor's oath declaration provision permits a substitute statement to be filed in an application when the inventor is: (i) deceased; (ii) legally incapacitated; (iii) unable to be found or reached after diligent effort; or (iv) refuses to sign an oath/declaration.

  • In an application in which the assignee is named as the applicant, is a statement under 37 C.F.R. 3.73 required along with the Power of Attorney, when the Power of Attorney is signed by the assignee-applicant?

    No, assignees and obligated assignees who are named as the applicant in the ADS (e.g., on filing) may give power of attorney without resort to 37 CFR 3.71 and 3.73. PTO form AIA/82 should be used to give the power of attorney.

  • An applicant plans to file a new application after September 16, 2012, and wishes to give power of attorney to a patent practitioner using USPTO form PTO/AIA/82. Since the application number is not yet known, may that field be left blank on the first page of the form (PTO/AIA/82A)?

    Yes, the application number is required to be identified only where the paper is being submitted for a previously-filed application for a patent. The application information fields on the PTO/AIA/82A should be completed to the extent possible to clearly identify the application to which the form is being directed.

  • An inventor-applicant filed an application after September 16, 2012, and gave a power of attorney. The assignee now wants to become the applicant, but does not wish to change the power of attorney given by the inventor. Is it necessary for the assignee to file a power of attorney that is consistent with the one provided by the inventor?

    No, the assignee-applicant would not need to file a new power of attorney so long as the power of attorney granted by the inventor-applicant remained. A new power of attorney from the assignee-applicant would need to be filed only if the power of attorney from the inventor was revoked.

  • Can an assignee who is not the applicant revoke or appoint a power of attorney in a patent application filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012?

    No, an assignee who is not an applicant must become the applicant under 37 C.F.R. 1.46(c) in order to revoke or appoint power of attorney.

  • Who is permitted to sign a power of attorney for a patent application?

    For an application filed on or after September 16, 2012, a power of attorney must be signed by the applicant. A "patent owner" may sign a power of attorney when a patent has issued, such as for a reissue application, reexamination proceeding, or a supplemental examination proceeding.

  • A person alleging sufficient proprietary interest, in order to be the applicant, must file a petition under 37 CFR 1.46(b)(2), which requires a showing that such person has sufficient proprietary interest in the matter. When must the petition under 37 CFR 1.46(b)(2) be filed?

    The petition under 37 CFR 1.46(b)(2) should be filed with the application. If the petition is not filed with the application, then the person who is alleging sufficient proprietary interest may not be considered the applicant. Instead, where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so it can be forwarded for examination). 37 CFR 1.46(c) provides that a request to change the applicant after an original applicant has been specified requires compliance with 37 CFR 3.71 and 3.73. A person alleging sufficient proprietary interest who later wants to become the applicant would not be able to comply with 37 CFR 3.71 and 3.73. In addition, any power of attorney must be signed by the applicant. If a petition has not been filed, then a person who allegedly has sufficient proprietary interest would not be able to sign a power of attorney.

  • Can assignee information be included on the U.S. patent application publication where the inventors are the applicant and there is an assignee who is not the applicant, and if so, can the non-applicant assignee information be provided on the ADS?

    Yes, assignee information can be included on the patent application publication even where the assignee is not the applicant. The current ADS form, PTO/AIA/14, does not have a field for providing non-applicant assignee information. The Office is in the process of revising the ADS form to provide an additional field for non-applicant assignee information for assignees who are not the applicant, but who want assignee information printed on the patent application publication. Until the revised ADS form is available, non-applicant assignee information may be provided on the application transmittal letter for the purpose of having the information printed on the patent application publication.

  • An applicant files an application naming two inventors. One of the inventors has assigned his rights to the invention to an assignee, but the second inventor has not assigned his rights and is under no obligation to assign. Who should be listed as the applicant in the "Applicant Information" section of the ADS?

    The assignee and the second inventor should be listed in the "Applicant Information" section of the ADS as the applicant.

  • An application filed after September 16, 2012, mistakenly identified the assignee as the applicant in the "Applicant Information" section of the ADS. How can this error be corrected in order to identify the inventors as the applicant?

    Once the assignee is misidentified as the applicant, a request to correct or update the name of the applicant would need to be accompanied by a new ADS and a statement under 37 C.F.R 3.73 that shows ownership by the inventors.

  • Section 1.33(b)(3) states that, unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner. What papers may be signed by the juristic entity?

    A juristic entity may sign substitute statements, small entity assertions, terminal disclaimers, powers of attorney, and submissions under 37 CFR 3.73(c) for an assignee to establish ownership of patent property if the assignee is not the original applicant.

  • Given that an application data sheet is required to be signed and given that a juristic entity must be represented by a patent practitioner, who should sign an application data sheet when the applicant is an assignee that is a juristic entity?

    A patent practitioner must sign the application data sheet for an assignee-applicant that is a juristic entity.

  • If an applicant files a continuation-in-part (CIP) application after September 16, 2012, naming inventors X and Y, and the parent application named only inventor X, can the applicant use in the CIP application a copy of the declaration signed by inventor X that was filed in the parent application?

    Yes, an applicant can use the declaration filed in the parent application if that declaration complies with new 35 U.S.C. 115 and a signed Application Data Sheet (ADS) is filed in the CIP application (either before or with the copy of the parent declaration) naming the inventive entity (X and Y). An oath or declaration signed by the additional inventor Y in the CIP application would also be required. But as long as a signed ADS was filed naming the inventive entity (X and Y) in the CIP application, the oath or declaration executed by the additional inventor Y in the CIP application would not need to identify inventor X.

  • Under the inventor's oath/declaration provision, what information must an inventor supply in his/her oath/declaration to be filed in the Office for a patent application?

    An inventor must state in his/her oath/declaration that (i) he/she is an original inventor of the claimed invention; and (ii) he/she authorized the filing of the patent application for the claimed invention. An inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship.

  • Why does the USPTO form PTO/AIA/01 state that the date of execution is optional?

    The Office has listed the date of execution on PTO/AIA/01 as optional because the Office does not check the date of execution and will not require a newly executed oath or declaration where the date of execution has been omitted. If an applicant prefers, he/she is welcome to include the date of execution.

  • Can I continue to use the same inventor declaration form after the effective date of the inventor's oath/declaration provision on September 16, 2012?

    No. There is new statutorily-mandated language that must be included in the inventor oath/declaration after September 16, 2012, that is not included on the inventor oath/declaration form available before that date. The new statutorily mandated language includes: (1) a statement that "the application was made or authorized to be made by the affiant or declarant," and (2) the acknowledgement of penalties clause must refer to "imprisonment of not more than 5 years." The Office has made a new oath/declaration form containing the necessary statutorily-mandated language available on the Office's AIA microsite as well as on the Office's form site.

  • What forms has the Office made available related to the inventor's oath/declaration provision?

    The Office has made a variety of new forms related to the inventor's oath/declaration provision available on the Office's AIA microsite as well as on the Office's form site, including an inventor declaration for an original (non-reissue) application, inventor declaration for a reissue application, substitute statement, and Application Data Sheet (ADS).

  • Our company has several pending applications that were filed prior to September 16, 2012, containing properly executed declarations pursuant to pre-AIA requirements. Although new declarations are not required, as the inventors are still available, can we have them execute new declarations compliant with the pre-AIA and post-AIA requirements and submit them so that copies can be used in any subsequent continuing applications?

    Yes, the inventors may execute new declarations compliant with pre-AIA and post-AIA requirements and submit them for use in any subsequent continuing applications if filed.

  • An applicant filed a PCT application before September 16, 2012. After September 16, 2012, the applicant plans to file a continuation application of the PCT application under 35 U.S.C. 111(a) (i.e., "bypass application"), rather than a national stage of the PCT application under 35 U.S.C. 371. Is the applicant required to submit in the bypass application an inventor's oath or declaration that complies with the AIA or with pre-AIA law?

    Where an applicant files a bypass application on or after September 16, 2012, the applicant must submit an inventor's oath or declaration that complies with the AIA.

  • For an application filed on or after September 16, 2012, but before March 16, 2013, that is still subject to the first-to-invent provisions of 35 U.S.C. 102 and 103, should the inventor's oath or declaration filed in that application continue to include the language that the inventor is the first inventor?

    No, an inventor's oath or declaration for an application filed on or after September 16, 2012, is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and does not need to state that the inventor is the "first" inventor, even though the application may be subject to the first-to-invent provisions of 35 U.S.C. 102 that the inventor be the "first" inventor.

  • Does the inventor's oath or declaration provision of the AIA apply to plant applications under 35 U.S.C. 161, design applications under 35 U.S.C. 171, and reissue applications under 35 U.S.C. 251?

    Yes, the changes to inventor's oaths or declarations introduced by the AIA apply to plant, design, and reissue applications as these are applications considered to fall under 35 U.S.C. 111(a).

  • If a continuation-in-part (CIP) application is filed after September 16, 2012, containing new matter relative to the parent application also filed after September 16, 2012, is the inventor required to review and understand the new matter in the CIP application and thus to be aware of the duty to disclose material information to the Office relating to the new matter?

    Yes, an inventor is under a duty of disclosure to the Office under 37 CFR 1.56 for all filings made at the Office, even though an inventor is not required under 35 U.S.C. 115 as amended by the AIA to acknowledge that duty of disclosure in writing in an inventor's oath or declaration. Because of the inventor's duty of disclosure, it is appropriate to have the inventor review a CIP application containing new matter before the CIP application is filed at the Office, even though the inventor need not execute a new oath or declaration.

  • If an applicant files a continuation application after September 16, 2012, claiming the benefit of an application filed before September 16, 2012, can the inventor's declaration filed in the parent application be re-submitted in the continuation application?

    Probably not. To re-submit an inventor's declaration from the parent application in the child application, the declaration from the parent application must comply with the requirements of 35 U.S.C. 115 as amended by the AIA. Specifically, the inventor's declaration must state that the inventor (i) is an original inventor of the claimed invention; and (ii) authorized the filing of the patent application for the claimed invention. The inventor's declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both. It is unlikely that the declaration from the parent application contains these statements since they were not required by pre-AIA law.

  • If an applicant filed an international application before September 16, 2012, and intends to submit national stage application under 35 U.S.C. 371 after September 16, 2012, must the inventor's declaration for the national stage application comply with the AIA rule changes to the inventor's declaration?

    No, the inventor's declaration is not subject to the AIA rule changes. The submission of a national stage application is not the filing of an application but instead relates to entry of the international application into the national stage. The filing date of a national stage application is the filing date of the international application. See MPEP § 1893.03(b).

  • If an applicant filed an application prior to September 16, 2012, without an executed declaration, and is submitting an inventor's oath or declaration after September 16, 2012, must the inventor's oath or declaration comply with pre-AIA law?

    Yes, the inventor's declaration is not subject to the AIA rule changes because the application was filed before the inventor's oath or declaration provision of the AIA became effective on September 16, 2012.

  • What is the effective date for the inventor's oath/declaration provision in the AIA?

    The effective date for the inventor's oath/declaration provision in the AIA is September 16, 2012.

  • An inventor filed a non-provisional application before September 16, 2012, with a declaration executed in her maiden name. After September 16, 2012, the inventor married and changed her last name. The inventor wishes to have the application record reflect her new name. Should the inventor request a change in inventor name under the practice employed before September 16, 2012 (i.e., a petition under 37 C.F.R 1.182 with a $400 fee as specified in MPEP § 605.04(c)) or under amended 37 C.F.R. 1.48(f) that became effective on September 16, 2012 (i.e., a signed request to correct the name submitted with an application data sheet and the $130 processing fee specified in 37 C.F.R. 1.17(i))?

    The inventor should file a request to change the inventor name under amended 37 C.F.R. 1.48(f), since the inventor seeks to correct her name after September 16, 2012.

  • If an applicant needs to change the inventorship in a nonprovisional application, what is the applicant required to submit?

    To change inventorship, an applicant must file a request under 37 CFR 1.48(a), an application data sheet listing the correct inventors, and a $130 fee. Additionally, the applicant must submit an inventor's oath or declaration for each added inventor.

  • If an applicant files an application via EFS-Web and then files a combination assignment-statement for recording against the application via EPAS on the same day as the application filing, will the applicant be required to pay a surcharge since the declaration did not physically accompany the application filing?

    No, while an assignment cannot be recorded against an application via EPAS until an application number is provided, the applicant will immediately receive the application number when the application is filed in EFS-Web. The applicant may then file the assignment-statement for recordation against the designated application number on the same day as the application filing through EPAS and avoid the surcharge for a delayed declaration.

  • Does the Office have an explicit preference to receive a combined assignment-statement where an invention has been assigned?

    No, the Office has no preference as to the type of inventor's oath or declaration to be filed for an application. The Office considers that the public interest is best served where an assignment, if one exists, is publicly recorded.

  • Does the Office intend to provide forms for the submission of a combination assignment-statement as the inventor's declaration?

    No, the Office does not plan to provide an assignment form that may also be used to meet the inventor's oath or declaration requirement because assignments are a matter of local law. If an applicant wants to file a combination assignment-statement, the Office suggests that the applicant re-draft his/her normally-used assignment to meet the requirements of new 37 CFR 1.63, including the required statements in 35 U.S.C. 115 as amended by the AIA. For ease of reference, the required statements are set forth in the USPTO declaration forms PTO/AIA/01 ("Declaration (37 CFR 1.63) For Utility or Design Application Using an Application Data Sheet (37 CFR 1.76)") and the PTO/AIA/08 ("Declaration for Utility or Design Patent Application (37 CFR 1.63)"). The declaration forms for Plant Applications are USPTO forms PTO/AIA/03 and PTO/AIA/09. Additionally, where an applicant considers merely attaching declaration page(s) to the end of the assignment document, the applicant should ensure that any signature is applicable to both the declaration pages and the assignment.

  • Can an assignment document contain the statements required to be included in an inventor's oath/declaration?

    Yes, an assignment may include the statements required in an oath/declaration. In such case, the applicant may file a combined inventor's oath/declaration and assignment document in the Office.

  • Can an assignee be the applicant for a provisional application?

    Yes, 37 CFR 1.46(b) relating to assignee-applicants refers to 35 U.S.C. 111 broadly thereby covering 35 U.S.C. 111(b) provisional applications.

  • If an assignee-applicant files a continuation-in-part (CIP) application after September 16, 2012, what steps should the assignee-applicant take for execution of the declaration?

    For an application filed on or after September 16, 2012 with an assignee as the applicant, the assignee-applicant must file an application data sheet identifying the assignee as the applicant. Additionally, the assignee-applicant must submit an executed inventor's oath or declaration no later than in response to a Notice of Allowability. For the inventor's oath or declaration, a copy of the oath or declaration from a prior application in the benefit chain may be used in the CIP application only where the prior declaration is compliant with 35 U.S.C. 115 as amended by the AIA. If the oath or declaration from a prior application in the benefit chain is not compliant with 35 U.S.C. 115 as amended by the AIA, then the inventor must execute a new oath or declaration that satisfies the AIA requirements.

  • Can a company, as the assignee, file a patent application for an invention on behalf of the company rather than on behalf of the inventor?

    Yes, the assignee can be the applicant. However, the inventor must still execute an oath/declaration. The assignee may only execute a substitute statement in lieu of an oath/declaration where the inventor refuses to execute an oath/ declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated.

  • If a second ADS is filed to correct or amend information presented in a previously filed ADS, is the second ADS required to include underlines and cross-outs to reflect the changes?

    Yes, an ADS that is provided to correct or update information (relative to the information submitted in a previously submitted ADS) must identify the information that is being changed via underlining for insertions and strike-through or brackets for text removed.

  • When a domestic benefit claim is submitted only in the specification of a new application and is not mentioned in the ADS, is a petition required to submit a corrected ADS after the four-month window with the domestic benefit claim?

    Yes, for applications filed on or after September 16, 2012, a domestic benefit claim(s) must be made in an ADS within four months from filing or sixteen months from the filing date of the prior-filed application, whichever is later. If a corrected ADS containing a domestic benefit claim(s) is presented outside of the four/sixteen month time period, then a petition to add an unintentionally delayed domestic benefit claim and fee must be filed to add the claim(s).

  • Are there any plans to have an EFS fillable corrected Application Data Sheet (ADS) form so that changes can be shown with markings (i.e., strike through or underlining)?

    Yes, the Office is working on an EFS-Web ADS that would be fillable and generated through EFS-Web. Once the EFS-Web ADS is available, the Office plans to work on creating an EFS-Web corrected ADS. We envision that the EFS-Web corrected ADS will auto-populate with the application information from USPTO systems so applicant can make changes to the existing information.

    For applications filed on or after September 16, 2012, a corrected ADS may contain only the section that includes the information being changed. Applicants do not have to use USPTO form AIA/14 to submit a corrected ADS and may instead create a corrected ADS in word processing software. For example, if filing a request to correct the spelling of an inventor's name, an applicant could create a corrected ADS in word processing software that identifies the application at the top and includes only the "Inventor Information" section, with the incorrectly spelled name stricken and the corrected name underlined.

  • The amended rules require that each claim for domestic benefit under 37 C.F.R. 1.78 or each claim for foreign priority under 37 C.F.R. 1.55 (except foreign priority claims in a national stage application) be present in an application data sheet (ADS). Will the use of an ADS for these benefit and priority claims also be considered as an incorporation by reference of the prior applications into the subject application?

    No, although an ADS submitted with an application is part of the application, the use of an ADS to make a claim for domestic benefit or foreign priority is not an express incorporation by reference of the prior application into the subject application. An express incorporation by reference must be set forth in the specification of the subject application as filed.

  • Is the use of an application data sheet (ADS) a best practice or is it now mandatory?

    Submission of an application data sheet (ADS) should be routine for all applications but is required where: (i) submission of the inventor's oath or declaration is to be delayed; (ii) each inventor's oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).

  • Can a party to a post grant review be sanctioned?

    Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

  • Can the parties to a post grant review settle?

    The AIA permits the parties to a post grant review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

  • How will the Board handle multiple proceedings for the same patent, such as two or more post grant reviews on the same patent?

    Where another matter involving the same patent is before the Office during the pendency of the post grant review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

  • Can a party to post grant review appeal the Board's final decision?

    Yes, a party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

  • After the Board renders a final decision in a post grant review, do any estoppels apply against the patent owner?

    Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

  • After the Board renders a final decision in a post grant review, do any estoppels apply against the petitioner?

    Yes, a petitioner in a post grant review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the post grant review. Similarly, a petitioner in a post grant review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the post grant review.

  • How will the Board conclude a post grant review?

    The AIA provides that where a post grant review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the post grant review.

  • How long will a post grant review take?

    A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

  • Is an oral hearing permitted during a post grant review?

    Yes, the AIA permits either party to a post grant review to request an oral hearing.

  • Can a party file a motion seeking relief at any time during the post grant review proceeding?

    A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

  • During a post grant review, how can a party seek relief?

    The AIA provides that a party may request relief during a post grant review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

  • What type of discovery is permitted during a post grant review?

    Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

  • Is discovery permitted during a post grant review?

    The AIA authorizes the Office to set standards and procedures for the taking of discovery during a post grant review, including that discovery be limited to evidence directly related to factual assertions advanced by either party in the proceeding.

  • How can a party to a post grant review protect confidential information?

    The AIA provides that the file of a post grant review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of confidential information.

  • If a post grant review is instituted, can the petitioner file additional information?

    A petitioner may supplement information provided in the petition for post grant review by a motion within one month of the date trial is instituted.

  • If a post grant review is instituted, can the patent owner amend the claims during the review?

    A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during a post grant review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.

  • If a post grant review is instituted, can the patent owner respond during the review?

    Yes, a patent owner may file a response after the institution of a post grant review.

  • Can a party appeal the Board's decision whether to institute a post grant review?

    No, a party is statutorily precluded from appealing the Board's decision whether to institute a post grant review.

  • Can a party request rehearing of the Board's decision on the petition?

    Yes, a party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

  • What is the standard for instituting a post grant review and who will decide whether the standard is met?

    The petitioner must demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable to trigger a post grant review. Alternatively, the petitioner may show that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The Patent Trial and Appeal Boardwill decide petitions for post grant review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office.

  • Can a patent owner respond to a petition for a post grant review?

    Yes, a patent owner may file a preliminary response to a post grant review petition to provide reasons why no post grant review should be instituted.

  • What is the fee for filing a post grant review petition?

    The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. For petitions filed prior to March 19, 2013, the fee for filing a petition challenging the patentability of up to 20 claims is $35,800. For each additional claim challenged, there is a fee of $800.00. For petitions filed on or after March 19, 2013, the request fee is $12,000 plus a fee of $250.00 for each claim over 20, and the post-institution fee is $18,000 plus a fee of $550.00 for each claim over 15.

  • What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review?

    In a petition for a post grant review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.

  • How does a party request a post grant review?

    To initiate a post grant review, a party must file a petition establishing certain statutory requirements.

  • On what grounds may a petitioner challenge a patent in a post grant review?

    A petitioner for post grant review may request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b) relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

  • Who may file for a post grant review?

    A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for a post grant review of the patent.

  • When can a petitioner bring a post grant review for a patent?

    A post grant review may be requested on or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent.

  • What patents are eligible for a post grant review?

    With limited exceptions, only those patents issuing from applications subject to first-inventor-to-file provisions of the AIA. The first-inventor-to-file provision of the AIA is not effective until March 16, 2013.

  • What is the effective date for the post grant review provision in the AIA?

    The effective date for the post grant review provision in the AIA is September 16, 2012.

  • If I have a patent issued before September 16, 2011, that undergoes reexamination, will Section 14 of the AIA apply during the reexamination?

    No. Section 14 of the AIA applies to patents issued on or after September 16, 2011.

  • Which patent applications will be subject to section 14 of the AIA?

    Section 14 of the AIA applies to any patent application that is pending on, or filed on or after, September 16, 2011.

  • What is the effective date of the tax strategy provisions in the AIA?

    The effective date of the tax strategy provisions is September 16, 2011.

  • How does Section 14 of the AIA affect the patentability of tax strategies?

    Applicants will no longer be able to rely solely on the novelty or non-obviousness of a tax strategy embodied in their claims in order to distinguish the claims from the prior art.

  • Will the examiner in a reexamination adopt the claim interpretation provided in the patent owner claim scope statement?

    No, the examiner in a reexamination will not necessarily adopt the interpretation of the claims based solely upon a written statement of the patent owner. Claim construction standards for reexamination are unaffected. A written statement of the patent owner will be weighed with all other relevant information in making an independent determination of the proper claim scope and meaning of the claims by the Office once a reexamination proceeding is ordered.

  • Will the Office consider a patent owner claim scope statement when deciding whether to institute an administrative trial such as a post grant review, inter partes review, or covered business method review?

    No, the Office may not consider such a patent owner claim scope statement when deciding whether to order or institute an administrative trial proceeding.

  • Will the Office consider a patent owner claim scope statement when deciding whether to order reexamination?

    No, the Office will only consider such a statement after reexamination has been ordered and only to inform the Office's determination of the proper scope and meaning of the claims.

  • When can third party or patent owner file a citation of patent owner statements?

    A third party or the patent owner may cite patent owner statements at any time.

  • Can a patent owner include an explanation of how the claims remain patentable when submitting a patent owner claim scope statement?

    Yes, a patent owner submitter may state how any claim is patentable over any submitted patent owner claim scope statement.

  • What are the filing requirements for submitting a patent owner claim scope statement into the official file of a patent?

    There are several items that must be included for a patent owner claim scope statement to be entered into the official file of a patent:

      1. An explanation of the pertinence and manner of applying the written statement to at least one claim of the patent;
      2. Any other documents, pleadings, and evidence from the proceeding in which the statement was filed that address the written statement;
      3. Identification of the forum and proceeding in which patent owner filed the statement;
      4. Identification of the specific papers and portions of the papers submitted that contain the statement;
      5. Explanation of how each statement submitted constitutes a position taken by patent owner on the scope of any claim of the patent; and
      6. Proof of service upon the patent owner if the statement is submitted by a third party.
  • Is a written statement by the patent owner regarding the scope of a claim of a particular patent eligible for submission into the official files of related patents?

    No, the written statement of the patent owner must be directed to the claims of the particular patent to which the statement is directed for the statement to be eligible for entry into the official file of that patent.

  • Is a deposition transcript of the patent owner filed by an accused infringer in a Federal court proceeding eligible for submission into the official file of a patent?

    No, the deposition transcript does not qualify as a written statement by the patent owner because the transcript was not filed by the patent owner in the Federal court proceeding. Instead, it was filed by the accused infringer. Thus, the content of the transcript are not taken to be a position by the patent owner in the Federal court proceeding.

  • Is a written statement of the patent owner regarding claim scope filed in a proceeding before the International Trade Commission (ITC) eligible for submission?

    No, the ITC is a Federal agency, not a Federal court. The citation of patent owner statements provision expressly provides for the submission of a statement filed in a proceeding before a Federal court or the Office only.

  • What types of written statements by a patent owner may be submitted into the official file of a patent?

    A statement of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent may be filed.

  • If a third party cites a patent owner statement, can a third party keep his/her identity confidential?

    Yes, a third party can request in writing to maintain his/her identity in confidence, and it will be excluded from the patent file.

  • Who is permitted to submit patent owner statements?

    Either a third party or the patent owner may cite patent owner statements in a patent file.

  • What is the effective date for the citation of patent owner statements provision in the AIA?

    The effective date for the citation of patent owner statements provision in the AIA is September 16, 2012.

  • When will the examination for registration to practice before the Office in patent matters be updated to include questions drawn to the Leahy-Smith America Invents Act?

    The Leahy-Smith America Invents Act includes a number of provisions with varying effective dates. Additionally, many of the provisions require that the USPTO issue rules to implement new procedures.

    The Office presently does not have a set schedule for updates to the registration examination to include changes made by passage of the patent reform bill. However, the Office expects the registration examination will undergo a number of changes in the next eighteen months as new laws, regulations, and procedures become effective.

  • How should a third party upload the form PTO/SB/429 using the preissuance submission interface of EFS-Web?

    Form PTO/SB/429 cannot be uploaded to EFS-Web. Filing through EFS-Web is an electronic alternative to paper filing using form PTO/SB/429. Instead of uploading the form, EFS-Web will automatically generate and complete the form after a third party provides all of the necessary information on the "Application Data" screen. A third party may click on the "Third-party-preissuance-submission.pdf" hyperlink to preview the generated form on the "Attach Documents" screen, and may make any necessary corrections by going back to the "Application Data" screen. Instructions for filing electronically are located athttp://www.uspto.gov/patents/process/file/efs/guidance/QSG_Third_Party_Preissuance.pdf. Instructions for filing in paper using form PTO/SB/429 are located at http://www.uspto.gov/forms/3prsubmission_instructions.pdf.

  • Can a third party file a preissuance submission via USPS Express Mail service?

    Yes, the USPS Express Mail service provisions of § 1.10 apply to a preissuance submission under § 1.290.

  • Can a third party file a protest using the preissuance submission interface of EFS-Web?

    No, a protest under § 1.291 must not be filed via EFS-Web. Instead, all protests must continue to be filed in paper.

  • As a Registered eFiler, how should a third party access the preissuance submission interface of EFS-Web?

    After user authentication, a third party must select "Existing application/patent" under the "Main Functions" heading and then select the radio button for "Third-Party Preissuance Submission under 37 CFR 1.290." Do not file a third-party submission by selecting "Documents/Fees for an existing application" because only an applicant and/or an applicant's representative may file follow-on papers in an application's file.

  • Can a third party file a preissuance submission electronically if the third party does not know the Confirmation Number for the application?

    No, a third party cannot electronically file a preissuance submission without a Confirmation Number for the application. The Confirmation Number can be obtained by looking up the application number in the Public Patent Application Information Retrieval (PAIR) System located at http://portal.uspto.gov/external/portal/pair and viewing the Bibliographic Data. If the Confirmation Number is not available or not known, the preissuance submission cannot be filed electronically and instead must be filed in paper.

  • Will the applicant be notified when a preissuance submission is entered into his/her/its application?

    Yes, the Office will notify the applicant upon entry of a compliant preissuance submission in an application file if the applicant participates in the Offices e-Office Action program. The contents of a compliant third-party submission will be made available to the applicant via its entry in the IFW of the application.

  • Does the applicant have any duty to respond to a preissuance submission? (Question: PS7300)

    No, absent a request by the Office, an applicant has no duty to, and need not, reply to a preissuance submission.

  • Will a third party be notified if his/her/its preissuance submission is found non-compliant?

    Yes, if a third party provides an electronic mail message (email) address with a preissuance submission, whether filed electronically or in paper, the Office will notify the third party of such non-compliance at the email address provided and will include the reason(s) for non-compliance. No notification will be issued where a third party does not provide an email address with the submission. See Question: How should a third party request that the Office provide notification if a preissuance submission is compliant or non-compliant? for further information

  • What happens if a preissuance submission is found non-compliant?

    Third-party submissions that are not compliant with the statute will not be entered into the image file wrapper (IFW) record of an application or considered by the examiner. Instead, non-compliant preissuance submissions will be discarded. The Office will not refund the required fees or toll the statutory time period for making a third-party submission. Additionally, the Office will not accept amendments to a non-compliant submission, but the party may file another complete submission, provided the statutory time period for filing a submission has not closed.

  • How does a third party indicate that he/she/it is eligible for the small entity discount when filing a third-party submission?

    When filing electronically, the submitter should select the "Small Entity" link on the "Calculate Fees" screen of the dedicated third-party submission EFS-Web interface and pay the applicable small entity fee. When filing in paper, the submitter should select the "small entity" box on the form PTO/SB/429 and pay the applicable small entity fee.

  • How does a third party determine whether the third party qualifies as a small entity?

    A third party may refer to 37 CFR 1.27(a) for guidance in determining whether a party qualifies as a small entity.

  • Is there a small entity discount for third-party submissions?

    Yes, a third party that qualifies as a small entity may take advantage of the small entity discount when making a third-party submission.

  • Can a third party pay the micro entity fee for a third-party submission?

    No, a third party is not eligible for the micro entity discount.

  • A third party paid the required fee for a submission of five documents in an application. The submission was found to be non-compliant. If the third party makes a re-submission of the same five documents in the application, will he/she/it need to pay the required fee again?

    Yes, to be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f) accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee to the resubmission. When filing electronically, the request may be made by selecting the third fee radio button in the “Statements” section at the bottom of the “Application Data” screen.  When filing in paper, the request may be made by selecting the third fee checkbox in the “Statements” section of the form PTO/SB/429.  The corrections in the resubmission must be limited to addressing the non-compliance, and the resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission.  The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.  Note that the resubmission must be made before the statutory time period for filing a third-party submission has closed.

  • A third party took advantage of the fee exemption when he/she/it made a first submission of three or fewer documents in an application but received notification that the submission was non-compliant. If the third party makes a re-submission of three or fewer documents in the application, will he/she/it have to pay the required fee?

    Yes, to be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the non-compliant submission of three or fewer documents was accompanied by the fee exemption statement set forth in 37 CFR 1.290(g), the third party may state that the fee exemption applies to the resubmission.  When filing electronically, the statement may be made by selecting the third fee radio button in the “Statements” section at the bottom of the “Application Data” screen.  When filing in paper, the statement may be made by selecting the third fee checkbox in the “Statements” section of the form PTO/SB/429.  The corrections in the resubmission must be limited to addressing the non-compliance, and the resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission.  The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.  Note that the resubmission must be made before the statutory time period for filing a third-party submission has closed.

  • How can a third party pay the required fee for a preissuance submission?

    When filing electronically, payment may be made on the "Pay Fees" screen by credit card, USPTO deposit account, or electronic funds transfer.

    When filing in paper, payment may be made by check, money order, credit card, or deposit account. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. Credit Card Payment Form (PTO-2038) should be used when paying by credit card. Form PTO-2038 may be downloaded athttp://www.uspto.gov/forms/index.jsp. To protect your credit card information, do not submit this form electronically through EFS-Web. Credit card information for electronic credit card payments should be entered exclusively on the USPTO Web site providing electronic payment capability.

  • If a third party wishes to file a third-party submission of twelve documents, what is the required fee?

    A fee is required for every ten items or fraction thereof identified in the document list. If the third party does not qualify for the small entity discount, the third party would have to pay a fee of $360 for twelve listed documents (i.e., $180 for the first ten documents and $180 for the remaining two documents). If filing electronically, the third party in this example would need to split the twelve documents into two separate submissions, paying $180 for each submission.

  • Can a third party electronically file a preissuance submission and pay the required fee at a later time?

    No, the fee must accompany a preissuance submission at the time of filing. Registered e-Filers who authenticate can save "in-progress" submissions and return to edit them prior to completing filing. Payment, in this instance, will be due when the filing is complete. Unregistered users, by contrast, must complete the filing and pay the fee at the time the submission is initiated.

  • If a third party took advantage of the fee exemption when he/she/it filed the first preissuance submission in an application, can the third party file a subsequent preissuance submission in the same application?

    Yes, a third party may file a subsequent preissuance submission if the need for the subsequent submission was not known at the time of the earlier submission. Any such subsequent submission would not be exempt from the fee requirement.

  • If another third party has already taken advantage of the fee exemption in the application, may a second third party also benefit from the fee exemption in the same application?

    Yes, a second third party may take advantage of the fee exemption in the same application as long as the submission includes three or fewer items and is accompanied by the "first and only" statement. However, such statement could not be made where the third parties are in privity with each other.

  • Is there a fee to file a preissuance submission?

    Yes, a third party must submit the required fee for every ten documents listed or fraction thereof, unless the fee exemption applies to the submission. A third party is exempt from paying a fee for a submission of three or fewer documents, provided it is the party's first such submission and the party files a "first and only" statement.

  • Does the issuance of a notice of allowance prevent filing a third party submission? (Question: PS5260)

    Yes, a third party submission must be filed prior to the date a notice of allowance is given or mailed. Where a notice of allowance has not been issued, a third party submission must be filed prior to the later of: (i) the date that is six months after the date on which the application is first published by the Office or (ii) the date of the first rejection of any claim by the examiner.

  • Does the filing of a request for continued examination (RCE) in an application reset the time period for filing a third-party submission?

    No, the filing of an RCE does not reset the time period for filing a third-party submission. However, the filing of an RCE does not preclude a third-party submission from being filed after the RCE, if the filing of the third-party submission would otherwise be filed within the time periods set forth in 37 CFR 1.290(b).

  • Assuming no notice of allowance has been issued in an application, can a third-party submission be filed on the date that is six months after the date the Office published the application if a first rejection has already been mailed in the application?

    No, all third-party submissions must be filed prior to, not on, the dates identified in 37 CFR 1.290(b). Assuming no notice of allowance has been issued in an application, if a third-party submission is filed on the date that is six months after the date the Office published the application and a first rejection has already been mailed, the submission would not be timely and would not be entered (i.e., if the Office published the application on May 21, a third-party submission filed on November 21, which is the date that is six months after the date the Office published the application, would not be timely as, according to the rule, the submission would need to have been made on November 20 or earlier).

  • Does the holiday/weekend rule set forth in 37 CFR 1.7(a) apply to a preissuance submission? (Question: PS5300)

    Yes, the holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a preissuance submission.

  • What happens if a third party files a preissuance submission on the same date the first rejection is mailed and the application has been published for more than six months?

    If a third party files a preissuance submission on the same date the first rejection is mailed and the application has been published for more than six months, the submission would not be timely and would not be entered. All third-party submissions must be filed prior to, not on, the critical date. Where the application has been published for more than six months and no notice of allowance has been mailed, the critical date is the mailing date of the first rejection such that the third-party submission would need to be filed prior to the mailing date of the first rejection.

  • How can a third party determine if a planned preissuance submission will be timely given the limited statutory time window for such submissions to be made?

    First, check Public PAIR to determine if a Notice of Allowance (NOA) has been issued in the application. If the NOA has been issued, you may not file a third-party submission. If the NOA has not been issued, determine if a first rejection has been issued by the examiner or if the application has been published for six months or longer. You may file as long as the first rejection has not been issued or the application has not been published for six months.

  • Should I provide the concise description for each listed item as a separate paper?

    While there is no requirement that each concise description of relevance be provided as a separate paper, the Office highly recommends this practice. Providing a separate paper for each concise description of relevance that prominently identifies printed publication to which the concise description pertains will help ensure that the screener and the examiner readily identify and consider it.

  • How do I include the concise description of relevance when filing electronically?

    Concise descriptions may be entered as text in the provided text box on the “Application Data” screen. Alternatively, the concise description may be uploaded as a separate document on the “Attach Documents” screen. When entering a concise description of relevance in the provided text box, up to 1000 characters may be entered. A concise description of relevance that exceeds 1000 characters must be uploaded as a separate document on the “Attach Documents” screen. When filed as a separate paper, the concise description of relevance should clearly identify the document to which it pertains.

  • Can a third party file an annotated copy of a listed document as the concise description of relevance for that listed document?

    No, merely annotating or highlighting the copy of the listed document itself will not be deemed a proper concise description of relevance.

  • What are examples of compliant and non-compliant concise descriptions of relevance formatted as a claim chart?

    Example of a compliant concise description formatted as a claim chart for a claim having only two elements:

    Claim 1 Publication X
    Element A As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X.
    Element B The first embodiment also includes element B of claim 1. See lines 1-3 on page 6 of publication X.

    Example of a non-compliant concise description formatted as a claim chart for a claim having only two elements:

    Claim 1 Publication X
    Element A As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X.
    Element B The first embodiment also includes element B of claim 1. See lines 1-3 on page 6 of publication X. Thus, publication X anticipates claim 1 because it teaches all of the elements of claim 1.
  • What are examples of compliant and non-compliant concise descriptions of relevance formatted as a narrative?

    Example of a compliant concise description formatted as a narrative for a claim having only two elements:

    "Publication X and publication Y both disclose machines that perform the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine."

    Example of a non-compliant concise description formatted as a narrative for a claim having only two elements:

    "Publication X and publication Y both disclose machines that perform the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine. Accordingly, claim 1 is obvious in view of publication X and publication Y."

  • Is a concise description of relevance required to be submitted in a particular format?

    No, a concise description of relevance is not required to be presented in a particular format. As one option, it may be presented as a narrative. Alternatively as a second option, a concise description of relevance may be presented as a claim chart mapping various portions of a submitted printed publication to different claim elements.

  • May I use the concise description of relevance to propose how the claims should be rejected?

    No, the concise description of relevance must not propose rejections of the claims. Instead, the concise description should only set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed. This is done, most effectively, by pointing out relevant pages or lines of the respective document and providing a focused description to draw the examiner's attention to the relevant issues.

    Unlike the concise explanation for a protest under §1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document's relevance. The concise description of relevance, therefore, does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.

  • Can a third party submit a compact disc (CD) containing a software program in a preissuance submission?

    No, a preissuance submission is required to be made in writing and contain printed publications. A software program may be submitted only if reduced to writing, such as in the form of screen shots. Additionally, evidence of publication may be required.

  • If a third party is required to submit a translation for a non-English language document, can the third party submit a machine translation?

    Yes, a reliable machine translation is acceptable. The translation need not be certified.

  • Where should a third party list an Office action on the form PTO/SB/429?

    All non-patent publications, such as Office actions, journal articles, communications from foreign patent offices, court documents, etc. that qualify as publications should be listed under the "Non-Patent Publications" section of the form PTO/SB/429 (or entered in the "Non-Patent Publications" section of the "Application Data" screen when filing electronically).

  • Can a third-party submission be filed anonymously?

    A real party in interest can remain anonymous by having someone else make the third-party submission for them, but the submitter cannot remain anonymous. The signature requirement of 37 CFR 1.4 for papers filed in a patent application, which require a person's signature, apply to third-party submissions. Third-party submissions must be signed due to statements that are required to be made under 37 CFR 1.290(d)(5) and 37 CFR 1.290(g) (if applicable) by the party making the submission. Thus, the identity of the submitter (i.e., the party signing the submission) will be provided to the applicant upon entry of the compliant submission in the application file.

  • What information can be included in an affidavit or declaration submitted as evidence of publication?

    Affidavits and declarations submitted as evidence of publication must be limited to facts establishing why a submitted document qualifies as a publication and must not to be used as a mechanism to place information that is not pertinent to establishing the document as a publication before the examiner. Further, affidavits and declarations submitted as evidence of publication should explain how the affiant/declarant has personal knowledge of the facts described therein and must be specific to the document(s) submitted for consideration.

  • Are there any requirements for affidavits and declarations submitted as evidence of publication?

    Yes, affidavits and declarations submitted as evidence of publication must comply with the Office's formal requirements set forth in MPEP § 715.04(II).

  • If the publication date of a printed publication is not known, can a third party still include that document in the preissuance submission?

    Yes, the third party may include a document for which the publication date is unknown in a preissuance submission. However, the third party must supply evidence of publication. At a minimum, the third party must provide a date of retrieval or a time frame when the document was available as a publication as well as include evidence that establishes the document as a publication. Such evidence may be in the form of affidavits, declarations, or any other appropriate format.

  • How should a third party request that the Office provide notification if a preissuance submission is non-compliant?

    If filing electronically via the dedicated Web-based interface in EFS-Web, the request must be made on the “Applicant Data” screen under the heading “REQUEST FOR NOTIFICATION REGARDINGTHIRD PARTY PREISSUANCE SUBMISSION.” Check the box requesting the notification and enter an email address in the box provided. The email address will not be made of record in the application should the submission be deemed compliant.

    If filing in paper, the request must be made on a separate sheet of paper. The paper should be clearly titled “REQUEST FOR NOTIFICATION REGARDING THIRD PARTY PREISSUANCE SUBMISSION” and identify the email address to which the notification should be directed. This separate paper must be clearly labeled so the paper is not made of record in the application.

  • Is it an absolute requirement to include form PTO/SB/429 with a preissuance submission?

    No, but it is highly recommended for paper submissions. Use of form PTO/SB/429 will help to ensure that important requirements are not overlooked, such as the document listing requirements and the required statements pursuant to § 1.290(d)(5). The form PTO/SB/429 will also enable the third party to indicate whether a fee is due or to select the "first and only" statement where the fee exemption applies.

    Use of this form will not be necessary for preissuance submissions filed electronically via the Office's dedicated Web-based interface for preissuance submissions, as this interface will prompt the third party to complete the fields that are provided on the form and will automatically format the entered information into an electronic version of the form PTO/SB/429 for electronic submission.

  • What items must be included in a preissuance submission?

    There are several items that must be included for a compliant preissuance submission:

    1. Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted [NOTE: use form PTO/SB/429 for paper submissions only; a completed form PTO/SB/429 will be automatically generated for electronic submissions];
    2. A concise description of the asserted relevance of each item identified in the document list;
    3. A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
    4. An English language translation of any non-English language item identified in the document list;
    5. Statements by the party making the submission that:
      1. The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
      2. The submission complies with the requirements of 35 U.S.C. 122(e) and § 1.290; and
    6. Any required fee, or the statement that the fee exemption applies to the submission.
  • When filing a preissuance submission electronically via the dedicated third-party submission EFS-Web interface, how does a third party enter an older patent with a serial number earlier than 4,000,000?

    The Office does not keep electronic records for older patents having a serial number earlier than 4,000,000.  Therefore, older patents cannot be verified against the USPTO database and the First Named Inventor and Issue Date fields cannot be automatically populated.  Accordingly, when entering a patent number less than 4,000,000, manually complete the Issue Date and First Named Inventor fields after clicking the “OK” button on the pop-up warning.

  • In what types of applications may a third party file a preissuance submission?

    A third party may file a submission in any non-provisional utility, design, or plant application, as well as in any continuing application, even if the application to which the submission is directed has been abandoned or has not been published. Third-party submissions may not be filed in any issued patent, reissue application, or reexamination proceeding.

  • How can a third party file a preissuance submission?

    Third parties are encouraged to file third-party submissions electronically through the Office's dedicated web-based interface for third-party submissions, which can be accessed via EFS-Web. Submissions may also be submitted in paper through first-class mail, United States Postal Service (USPS) Express Mail service pursuant to 37 CFR 1.10, or by hand delivery. However, processing delays will be associated with paper submissions due to the scanning and indexing of these papers by the Office. Third-party submissions may not be filed by facsimile.

  • When can a third party make a preissuance submission in a patent application?

    A third-party preissuance submission statutorily must be made in a patent application before the earlier of: (a) the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or (ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

  • Who may file a preissuance submission?

    Any member of the public may file a third-party submission, including private persons and corporate entities. However, the third party may not be the applicant or any individual who has a duty to disclose information with respect to the application under § 1.56.

  • What is the effective date for the preissuance submission provision in the AIA?

    The effective date for the preissuance submission provision in the AIA is September 16, 2012.

  • Is an examiner reluctant to apply prior art from a third party submission as opposed to applying prior art identified from his/her own search?

    No, an examiner is motivated to apply the best prior art available to make a rejection, regardless of whether the examiner or a third party found the prior art.

  • What can a third party file in a preissuance submission?

    A third party may file any patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application.

  • Assuming at least one substantial new question of patentability was found in the supplemental examination, when will the Office mail the order granting reexamination?

    The Office generally expects to mail the communication entitled "Ex Parte Reexamination Ordered Pursuant to 35 U.S.C. 257," if applicable, shortly after the electronic publication of the supplemental examination certificate.

  • What happens after a supplemental examination concludes?

    At the conclusion of a supplemental examination, the Office will issue an electronic supplemental examination certificate as part of the public record for the patent. If the certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257 by a subsequent communication. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex partereexamination was ordered under 35 U.S.C. 257, will be published as an attachment to the patent. If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, ex parte reexamination will not be ordered and the fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). In this case, the electronically issued supplemental examination certificate will be published in due course as an attachment to the patent.

  • What documents are mailed at the conclusion of supplemental examination?

    The Office will mail the following two documents to the patent owner at the conclusion of supplemental examination: (1) the Supplemental Examination Certificate; and (2) the Reasons for Substantial New Question of Patentability Determination. The certificate will state whether a substantial new question of patentability was or was not raised by the request for supplemental examination. The certificate also will list the items of information. The Reasons for Substantial New Question of Patentability Determination will set forth the examiner's determination as to whether each item of information raised a substantial new question of patentability.

  • Are there any consequences if the patent owner commits a material fraud on the Office during a supplemental examination?

    If a patent owner commits a material fraud on Office during the supplemental examination, then the Office may confidentially refer the matter to the U.S. Attorney General and may take other action.

  • What benefit does a patent owner gain by seeking a supplemental examination for a patent?

    The patent owner can immunize the patent against allegations of inequitable conduct by completing a supplemental examination. Specifically, information considered, reconsidered, or corrected during a supplemental examination cannot be the basis for rendering a patent unenforceable for inequitable conduct, so long as the supplemental examination and any resulting ex parte reexamination are completed before the civil action is brought. The patent owner, however, cannot secure inequitable conduct immunization for information raised in a civil action brought before a supplemental examination.

  • How will a supplemental examination terminate?

    The Office will conclude a supplemental examination by issuing a certificate of supplemental examination. The certificate will indicate the results of the Office's determination as to whether any item of information filed by the patent owner in the request raised a substantial new question of patentability.

  • If the Office determines that an item of information raises a substantial new question of patentability and orders an ex parte reexamination, do the existing rules for an ex parte reexamination apply?

    An ex parte reexamination ordered as a result of an ex parte reexamination will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each substantial new question of patentability without regard to whether it is raised by a patent or printed publication.

  • What standard applies in a supplemental examination?

    In a supplemental examination, the Office will determine whether any item of information presented in the request raises a substantial new question of patentability. The substantial new question of patentability standard is triggered when there is a substantial likelihood that a reasonable examiner would consider an item of information important in determining the patentability of the claimed invention.

  • How will the Office treat a request for supplemental examination from a patent owner?

    Within 3 months from the filing date of a request for supplemental examination from a patent owner, the Office will determine whether any of the items of information filed with the request raises a substantial new question of patentability. If a substantial new question of patentability is found for any item of information, then the Office will order an ex parte reexamination of the patent.

  • What happens if the Office determines that a request for supplemental examination fails to comply with the filing date requirements?

    A request for supplemental examination that fails to satisfy the filing requirements of 37 CFR 1.605, 1.610, and 1.615 will not be granted a filing date. The Office will not make a request for supplemental examination public until the request is granted a filing date. The Office has a procedure in which the request, and any other papers or information submitted as part of or accompanying the request, would not be viewable in Public PAIR until a filing date is granted by the Office.

    Additionally, the patent owner identified as requesting supplemental examination will be notified of the defects and will be given an opportunity to complete the requirements of the request within a specified time. A form "Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d))," is used to provide the notification for supplemental examination. If further explanation is needed as to a non-compliance item, the box at the bottom of the form will be checked. An attachment will then be completed to specifically explain why the request does not comply. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the filing requirements, the filing date of the supplemental examination request will be the receipt date of the corrected request. If the patent owner does not timely file a corrected, compliant request in response to the Office's "Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d))," the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in 37 CFR 1.20(k)(2) will be refunded. The supplemental examination proceeding also will be terminated.

  • Did the fees for supplemental examination change due to the "Setting and Adjusting Patent Fees; Final Rule," 78 FR 4212 (January 18, 2013)?

    Yes, the filing fees for a supplemental examination request and any resulting ex parte reexamination were reduced to be about 22% below the Office's cost for these services. For example, the total supplemental examination filing fees are $16,500 ($4,400 for the request and $12,100 for the reexamination) for a large entity. The document size fee for 21-50 pages was increased to $180 for a large entity. The final rule also applied a 50% small entity discount and a 75% micro entity discount to the fees. These new service fees became effective on March 19, 2013. See the fee schedule posted at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

  • What types of documents are subject to the requirement for a summary of the relevant portions of the documents, including citations to the particular pages containing the relevant portions?

    Any document, other than the request, that is over 50 pages in length is subject to the summary requirement. "Any document" includes both patent and non-patent documents.

  • How are the document size fees calculated?

    Non-patent documents having 21 - 50 pages are subject to a fee of $180 for large entity ($90 for small entity or $45 for micro entity), which must be submitted with the request. Non-patent documents having greater than 50 pages are subject to an additional fee of $280 for large entity ($140 for small entity or $70 for micro entity) for each additional 50-page increment, or a fraction thereof, which must also be paid at the time of filing the request. For example, for a large entity, if a journal article having a length of 145 pages is submitted as an item of information which forms part of a request for supplemental examination, a document size fee of $740 is due upon the filing of the request. The $740 document size fee is calculated by adding the $180 fee for 21 - 50 pages, and two additional fees of $280 for each additional 50 pages, or a fraction thereof (i.e., a $280 fee for 51 - 100 pages, and a second $280 fee for the remaining 45 pages, which is a fraction of a 50-page increment).

  • Will blank pages in a non-patent document be counted for the purposes of the document size fee?

    Yes, the Office will use an automatic page counter that will not subtract blank pages from the total page count for the non-patent document. This policy is consistent with the Office policy for application size fees.

  • Would a translation of a patent document be subject to the document size fees?

    No, translations of non-English language patent documents are also not subject to the document size fees.

  • Which documents are subject to the document size fees?

    The document size fees apply only to non-patent documents that have a length of more than 20 pages. Non-patent documents having a length of 20 pages or less are not subject to the document size fees. Non-patent documents include, for example, non-patent literature, transcripts of audio or video recordings, and court documents. Patent documents, such as U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents, are not subject to the document size fees.

  • Will the patent owner receive a refund of a portion of the fees if reexamination is not ordered because no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request?

    Yes, the fee of $12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity) for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded if the supplemental examination certificate indicates that no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request and reexamination is not ordered.

  • What fees are required to be filed with a request for supplemental examination?

    A request for supplemental examination must be accompanied by a total fee of $16,500 for a large entity ($8,250 for small entity or $4,125 for micro entity), broken down as (i) a fee of $4,400 for a large entity ($2,200 for small entity or $1,100 for micro entity) for processing and treating a request for supplemental examination; and (ii) a fee of $12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity) for ex parte reexamination ordered as a result of a supplemental examination proceeding. In addition, a request for supplemental examination must be accompanied by any applicable document size fees.

  • If a request for supplemental examination is filed to correct a declaration or affidavit in the prior examination, would a corrected declaration or affidavit and a marked-up copy of the previously-filed declaration or affidavit be counted as one or two items of information?

    The corrected declaration would be counted as one item of information and the marked-up copy of the previously-filed declaration would be counted as a second item of information. This is because the request included two separate documents for the examiner to consider, reconsider, or correct.

  • If a declaration or affidavit presents multiple items of information, will the declaration or affidavit be counted as one item of information?

    No, if a declaration or affidavit presents one or more separate and distinct items of information, then each item of information presented may be counted separately. For example, if a declaration presents information relating to an issue under 35 U.S.C. 101 affecting patent claim 1, and also presents information relating to an issue under 35 U.S.C. 103 affecting patent claim 10, then each item of information within the declaration will be counted separately, resulting in two items of information.

  • Will a declaration or affidavit be counted as an item of information?

    Yes, a declaration or affidavit may be counted as an item of information.

  • If one or more items of information are presented by the patent owner as cumulative, how will these items of information be counted?

    Cumulative items of information will be separately counted. When considering the submission of multiple documents that are believed to be cumulative, the Office recommends the patent owner select one or two of the documents as the items of information that will be submitted with the request.

  • If one item of information is combined in the request with one or more additional items of information, how will the combination of items of information be counted?

    Each item of information of the combination will be separately counted. For example, if a patent owner requests the Office to consider the patentability of the claims in view of a combination of reference A and reference B, reference A and reference B will be separately counted, resulting in two items of information.

  • Is an item of information required to be in writing?

    Yes, an item of information must be in writing. The Office currently does not have the capability of retaining records in unwritten form. For this reason, any audio or video recording must be submitted in the form of a written transcript in order to be considered. A transcript of a video may be submitted together with copies of selected images of the video and a discussion of the correlation between the transcript and the copies of the video images.

  • May an item of information, such as an image of a supporting document, be embedded within the body of the request in lieu of being submitted as a separate copy of the supporting document?

    No, if the patent owner presents an image of a supporting document, such as an image of an electronic mail message or other document, within the body of the request, then a separate copy of the supporting document must be provided. The separate copy of the item of information will be considered as the item of information. The counting of an item of information may not be avoided by inserting the content of the supporting document within the body of the request.

  • If the discussion within the body of the request is based, at least in part, on a supporting document, will the discussion in the body of the request be counted as an item of information?

    No, if the discussion within the body of the request is based, at least in part, on a supporting document, then the supporting document, and not the discussion within the request, will be considered as the item of information. For example, if the patent owner discusses a potential public use or sale of the claimed invention, and also submits a supporting document with the request as possible evidence of a public use or sale, or the lack thereof, then the supporting document, and not the discussion within the body of the request, will be considered as an item of information.

  • How many items of information may a patent owner submit in a request for supplemental examination?

    A request for supplemental examination may include up to twelve items of information.

  • Is the request for supplemental examination subject to a page limit?

    No, there are no page limits applicable to a request for supplemental examination. However, if any document, other than the request, is over 50 pages in length, then the patent owner must provide a summary of the relevant portions of the document with citations to the particular pages containing the relevant portions. In addition, any non-patent document over 20 pages in length that is submitted as part of the request is subject to the document size fees.

  • May a supplemental examination request be filed by a licensee or other party that is not the owner of the patent?

    No, only a patent owner may file a request for supplemental examination. The Office is not authorized to permit a party who is not a patent owner, or a party who merely states that it is, for example, an exclusive licensee or a person with sufficient proprietary interest under 35 U.S.C. 118, to file a request for supplemental examination.

  • May a request for supplemental examination be filed by fewer than all of the joint owners of the patent, if the patent for which supplemental examination is requested is jointly owned by more than one party?

    No, all parties having an ownership interest in the patent must act together as a composite entity in proceedings before the Office. This policy is consistent with ex parte reexamination practice. Under rare circumstances, such as in the case of a deceased or legally incapacitated joint owner, the Office may permit less than all of the joint owners to file a request if a grantable petition under 37 C.F.R. § 1.183 requesting waiver of the provisions of 37 C.F.R. §§ 3.71 and 3.73(c) is filed. If the owner of all or a portion of the entire right, title, and interest in the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction.

  • Which patents are eligible for supplemental examination?

    A patent owner may request supplemental examination of any patent during the period of enforceability of the patent.

  • Who may file a supplemental examination?

    The patent owner may file a supplemental examination; a third party is not permitted to seek a supplemental examination.

  • What type of information can a patent owner present to the Office in a supplemental examination?

    The patent owner may present any information believed to be relevant to the patent. The information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.

  • What is the purpose for a supplemental examination?

    The patent owner may request a supplemental examination for a patent so that the Office can consider, reconsider, or correct information believed to be relevant to the patent.

  • What is the effective date for the supplemental examination provision in the AIA?

    The effective date for the supplemental examination provision in the AIA is September 16, 2012.

  • If an application claims priority to/the benefit of multiple applications (foreign or domestic), will the application have multiple effective filing dates to the claimed subject matter? (Question: FITF1122)

    The AIA has not changed current practice for determining priority (the effective filing date) for different claims within a claim set. The effective filing date is determined on a claim-by-claim, and not on an application basis (i.e., a claimed invention, and not an application, has an effective filing date). Some claims in an application may be supported by a priority document having one filing date, and other claims in the application may be supported by a different priority document having a different filing date or may not be supported by any priority/benefit document.

  • What is the difference between the term "effective filing date" (35 U.S.C. 102(b)(1)) and the term "effectively filed" date (35 U.S.C. 102(d)) as used in the FITF provisions of the AIA? (Question: FITF1110)

    The "effective filing date" is relevant in the application under examination, and means the earliest date to which the claims under examination are entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365. The "effectively filed" date is relevant in a U.S. patent, U.S. patent application publication, or WIPO published PCT application being considered as prior art, and means the earliest foreign or domestic application to which a U.S. patent, U.S. patent application publication, or WIPO published PCT application claims priority or benefit under 35 U.S.C. 119, 120, 121, or 365 that describes the subject matter being relied upon in a prior art rejection where the prior art qualifies under 35 U.S.C. 102(a)(2).

  • Under the new section 35 U.S.C. 102(a)(1) introduced by the AIA, what does the term "effective filing date" of a claimed invention mean? (Question: FITF1100)

    The "effective filing date" of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention. For example, the effective filing date could be filing date of (i) an earlier-filed nonprovisional application or international application designating the United States (benefit under 35 U.S.C. 120,121, or 365(c)); (ii) a provisional application (benefit under 35 U.S.C. 119(e)); or (iii) a foreign application (priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b)).

  • For Web references, does the USPTO use archive.org (aka, "The Wayback Machine") to get the actual pblication date rather than printout date of the Web reference? (Question: FITF1058)

    Yes, examiners use "The Wayback machine" as a source of information to determine when a Web reference was first made available to the public.

  • How should applicant's admitted prior art be treated under the AIA? (Question: FITF1057)

    The AIA does not change the current policy discussed in MPEP § 2129 with respect to the use of applicant's admissions as prior art. A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission that can be relied upon for both anticipation and obviousness determinations. See Examination Guidelines for Implementing the FIrst Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 1164, 11075 (Feb. 14, 2013) (response to comment 20 and "Admissions").

  • Are pre-AIA 35 U.S.C. 102(c), (d), (f), and (g) applicable to AIA (FITF) applications? (Question: FITF1056)

    Pre-AIA 35 U.S.C. 102(c), (d), and (f) are applicable only to pre-AIA (FTI) applicatoins. Pre-AIA 35 U.S.C. 102(g) applies to pre-AIA (FTI) applications as well as any AIA (FITF) application that contains or ever contained a claimed invention having an effective filing date that is before March 16, 2013.

  • Will examiners continue to make 35 U.S.C. 102(e) rejections in AIA (FITF) applications? (Question: FITF1055)

    No, examiners will not make rejections under pre-AIA 35 U.S.C. 102(e) in AIA (FITF) applications. However, 35 U.S.C. 102(a)(2) is a "counterpart" of pre-AIA 35 U.S.C. 102(e) and provides for rejections on the basis of U.S. patents, U.S. patent applicaton publications, or WIPO published PCT applications that designate the United States, that contain subject matter that was effectively filed before the effective filing date of the claims in the application under examination.

  • Did pre-AIA 35 U.S.C. 102(b) and 102(e) disappear after the first-inventor-to-file provision became effective on March 16, 2013? Will all anticipation rejections be made under 35 U.S.C. 102(a) after March 16, 2013? (Question: FITF1054)

    If an application is a pre-AIA (FTI) application, examiners will continue to make prior art rejections (if appropriate) on the basis of publicatoins and activities that qualify as prior art under pre-AIA 35 U.S.C. 102(a), 102(b), 102(e), 102(f) and 102(g). By contrast, if the application is an AIA (FITF) application, examiners will make prior art rejections (if appropriate) on the basis of publicatoins and activities that qualify as prior art under 35 U.S.C. 102(a)(1) or 102(a)(2).

  • Do foreign patent documents or publications have to be translated to be available as prior art under 35 U.S.C. 102(a)? (Question: FITF1053)

    Non-English language foreign patent documents or non-patent literature being relied upon in a rejection must be translated if necessary for the record to be clear as to the facts relied upon to support the rejection. See MPEP § 706.02 (section II) and Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 11063 (Feb. 14, 2013) response to comment 14).

  • Will the AIA (FITF) law have any effect on provisional applications filed before March 16, 2013? (Question: FITF1052)

    No, the AIA (FITF) law will not affect any application filed before March 16, 2013.

  • Does the AIA provide a date in the future where all applications will be considered as AIA (FITF) applications? (Question: FITF1051)

    No, the applicability of the America Invents Act first-inventor-to-file law ("AIA (FITF)") or pre-America Invents Act first-to-invent ("pre-AIA (FTI)") law depends on the effective filing date of a claimed invention as defined in 35 U.S.C. 100(i) and not on an arbitrarily selected cut-off date.

  • What is the effective date of the first-inventor-to-file provisions? (Question: FITF1000)

    The effective date for the first inventor-to-file provisions is March 16, 2013.

  • Will fees collected in FY 2011 in excess of USPTO's appropriations be deposited into the Reserve Fund created by Section 22 of the Act? (Question: FEE7000)

    No, the reserve fund is only effective upon the first day of fiscal year 2012 (October 1). So any fees collected in excess of USPTO's appropriations in FY 2011 (see Question FEE2050) would not be deposited in this new fund. Any fees collected in excess of FY 2012 amounts this coming year will be deposited in the new fund and, assuming the USPTO receives appropriations language giving the agency the authority to access these fees, would be available to the USPTO subject to submission of a reprogramming request.

  • What will happen if I forget to pay a new patent fee amount required on or after March 19, 2013, but instead pay the patent fee amount applicable before March 19, 2013? (Question: FEE6320)

    The applicable fee amount is the amount in effect on the day the fee is paid. If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees. To avoid insufficient payment of fees, applicants are encouraged to provide authorization in the application file to charge fees to a specified Deposit Account.

  • If the patent Maintenance Fee Reminder notice was mailed prior to the implementation of the new fee schedule, but the maintenance fee is paid on or after March 19, 2013, after the new patent fee schedule becomes effective, does a patentee need to pay the new fee amount, regardless of what appears on the notice? (Question: FEE6315)

    Yes, a patentee must pay the fee that is in effect on the date when payment is received by the Office. The maintenance fees for a large entity due on March 19, 2013, are $1,600 for the first-stage payment due at 3.5 years; $3,600 for the second-stage payment due at 7.5 years; and $7,400 for the third-stage payment due at 11.5 years.

  • If an application is allowed prior to the implementation of the new fee schedule, but the applicant pays the issue and publication fees on or after March 19, 2013, does the applicant need to pay the new fee amount of $2,080 (i.e., large entity issue fee of $1,780 plus publication fee of $300), regardless of what appears on the Notice of Allowance and Fee(s) Due (PTOL-85)? (Question: FEE6310)

    Yes, an applicant must pay the fee that is in effect on the date when payment is received by the Office. The utility issue and publication fees due on March, 19, 2013, are $1,780 and $300, respectively, for large entities for a total fee due of $2,080. Likewise, if an application is allowed prior to January 1, 2014, but the applicant pays the issue and publication fees on or after January 1, 2014, the applicant is required to pay a large entity issue fee of $960 plus publication fee of $0 for a total of $960.

  • If an applicant filed an appeal brief and paid the fee for filing the brief before March 19, 2013, will the applicant also be required to pay the fee to forward an appeal required on or after March 19, 2013? (Question: FEE6305)

    No, the USPTO has issued a Partial Waiver of the Appeal Forwarding Fee if the fee for filing an appeal brief was filed before March 19, 2013. The waiver avoids the payment of extra fees that would otherwise result when an applicant paid both the appeal brief and accompanying fee on or before March 18, 2013, and also would be required to pay the fee to forward an appeal on or after March 19, 2013. As a result of this waiver, an applicant will not be required to pay both fees.

  • When calculating the fee for a second or subsequent RCE, do I count the number of RCEs filed for that application in total, or only the number of RCEs filed for that application in total, or only the number of RCEs filed since the new fee was established on March 19, 2013? (Question: FEE3000)

    An applicant is required to pay the fee for a second or subsequent RCE for the application based on the total number of RCEs filed for the application, regardless of other whether the first or any earlier RCEs were filed prior to March 19, 2013.

  • I understand that on March 19, 2013, the USPTO will offer reduced fees for micro entity applicants and patentees. I have determined that I qualify as a micro entity applicant. Where can I locate the new micro entity fees? (Question: FEE6250)

    The USPTO has updated its fee schedule format to include a new column denoting micro entity fees. A complete listing of the new fee amounts effective on March 19, 203, including the new micro entity fee amounts, is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

  • I would like to ensure that I am paying the proper fee amount for a particular service. How do I determine the new patent fee amounts? (Question: FEE6200)

    A complete listing of the new patent fee amounts effective on March 19, 2013 is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

  • On what date will I have to begin paying the new patent fee amounts set forth in the patent fee final rule? (Question: FEE6100)

    Almost all fees included in the patent fee final rule become effective at 12:00 a.m. Eastern Daylight Time on Tuesday, March 19, 2013. However, the following fee changes become effective at 12:00 a.m. Eastern Daylight Time on Wednesday, January 1, 2014:

    • § 1.18(a)(1), (b)(1), (c)(1), and (d)(1): patent issue and publication fees
    • § 1.21(h)(1): fee for recording patent assignment, agreement, or other document - submitted electronically
    • § 1.482(a)(1)(i), (a)(1)(ii), and (a)(2)(i): PCT international preliminary and supplemental examination fees
    • § 1.445(a)(1), (a)(4), (a)(2)(i), (a)(3), ad (a)(1)(ii): PCT international application transmittal and search fees
  • A third party paid the $180 fee for a submission of five documents in an application. The submission was found to be non-compliant. If the third party makes a re-submission of the same five documents in the application, will he/she need to pay the $180 fee again? (Question: FEE5005)

    Yes, for any re-submission, a third party must pay the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documnts). In this instance, a fee of $180 would be required for the re-submission of the five documents.

  • A third party took advantage of the fee exemption when he/she made a first submission of three or fewer documents in an application but received notification that the submission was non-compliant. If the third party makes a re-submission of three or fewer ocuments in the application, will he/she have to pay the $180 fee? (Question: FEE5000)

    Yes, a third party must pay the $180 fee to make a re-submission of three or fewer documents in an application where the third party's first submission of three or fewer documents in the application took advantage of the fee exemption and was found to be non-compliant. The fee exemption does not apply to a resubmission because the third party will not be able to make the "first and only" statement under 37 C.F.R. 1.290(g).

  • If a micro entity applicant files a loss of entitlement to micro entity status and wants to claim small entity status, can the applicant do so in a single filing with the Office or is the applicant required to file both a loss of entitlement of micro entity status and a separate certification of small entity status? (Question: FEE4710)

    An applicant may file single notice to the USPTO indicating the concurrent loss of entitlement to micro entity status and certification of small entity status.

  • If an applicant loses eligibility for micro entity status, can the applicant pay the fee in the small or undiscounted amount, as appropriate, without notifying the Office of loss of micro entity status? (Question: FEE4705)

    An applicant who loses entitlement to micro entity status cannot pay a fee in the small or undiscounted amount without first or simultaneously notifying the Office in writing of loss of micro entity status.

  • If an applicant is no longer eligible for micro entity status, can the applicant make a simple statement of loss of status without identifying which requirement(s) for micro entity status is no longer satisfied? (Question: FEE4700)

    Yes, an applicant can make a simple statement that he/she/it is no longer eligible for micro entity status without identifying the particular reason(s) for loss of entitlement to micro entity status.

  • If an applicant qualifies for micro entity status, should the applicant (i) file a micro entity certification and simultaneously pay the issue fee in the micro entity amount; or (ii) file the micro entity certification first and then later pay issue fee in the micro entity amount? (Question: FEE4635)

    The micro entity certification must accompany the issue fee payment in the micro entity amount or be filed in the application prior to payment of the issue fee payment in the micro entity amount. Therefore, the applicant has discretion to do either (i) or (ii).

  • If a registered patent practitioner is representing three joint inventors and intends to sign the micro entity certification on behalf of three joint inventors who qualify for micro entity status, should the practitioner sign only one certification for all inventors or sign three separate certifications, one for each inventor? (Question: 4630)

    A practitioner who represents three joint inventors who qualify for micro entity status may sign a single micro entity certification on behalf of the three joint inventors.

  • Can an independent inventor sign a micro entity status certification if he/she prepared the patent application and there is no assignee? (Question: FEE4625)

    Yes, an independent inventor can sign the micro entity certification provided the inventor is identified as the applicant.

  • Is a micro entity certification form required for each fee payment made in the micro entity amount? (Question: FEE4620)

    An applicant is not required to provide a certification of micro entity status with each fee payment once micro entity status has been established in an application. The applicant nevertheless must make a determination whether the requirements for micro entity status exist at the time each fee payment is made. If any requirement for micro entity status is no longer met, then the applicant must notify the Office of loss of micro entity status and pay the required fee in the small or undiscounted amount, as approrpriate.

  • Who can sign a certification of micro entity status? (Question: FEE4615)

    A certification of micro entity status can be signed only by an authorized party as set forth in 37 C.F.R. 1.33(b), which includes:

    1. A registered patent practitioner, meaning a registered attorney or agent who is either of record or acting in a representative capacity under 37 C.F.R. 1.34;
    2. An inventor who is named as the sole inventor and identified as the applicant; or
    3. All of the joint inventors who are identified as the applicant

    For joint inventor applicants, each joint inventor should sign a separate copy of the relevant micro entity certification form. However, if one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form. See USPTO form number AIA/81 titled Power of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address available on the USPTO forms webpage at http://www.uspto.gov/forms

    Additionally, if any applicant is an assignee or other party under 37 C.F.R. 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.

  • Can a micro entity certification form be filed in an application before March 19, 2013 - the date that micro entity fee amounts become available? (Question: FEE4610)

    Yes, an applicant may file a micro entity certification form before March 19, 2013. However, an applicant who is eligible for the micro entity discount cannot pay fees subject to the micro entity discount until March 19, 2013.

  • Can a micro entity certification be a simple statement that the applicant qualifies for micro entity status under the "gross income" basis set forth in 37 C.F.R. 1.29(a) or the "institution of higher education" basis set forth in 37 C.F.R. 1.29(d) without enumerating of any of the respective requirements for micro entity status? (Question: FEE4605)

    No, a micro entity certification must certify that all of the requirements for micro entity status as they appear in 37 C.F.R. 1.29(a) or (d), as applicable; a simple statement alleging entitlement to micro entity status is not sufficient. Applicants are encouraged to use the USPTO micro entity certification forms available on the USPTO forms webpage at http://www.uspto.gov/forms.

  • Does the USPTO have any micro entity certification forms available? (Question: FEE4600)

    Yes, the USPTO has two micro entity certification forms available on the USPTO forms webpage at http://www.uspto.gov/forms One form is available for micro entity certification under the "gross income" basis set forth in 37 C.F.R 1.29(a), and the other form is available for micro entity certification under the "institution of higher educaiton" basis set forth in 37 C.F.R. 1.29(d).

  • If a maintenance fee is due on May 1, 2013 for an application filed before March 19, 2013, and the patentee qualifies as a micro entity, can the patentee pay the maintenance fee in the reduced micro entity amount? (Question: FEE4530)

    Yes, a patentee who qualifies for micro entity status when a maintenance fee is due may pay the maintenance fee in the micro entity amount, provided of course that the required certification of micro entity status is filed together with, or prior to, the maintenance fee payment.

  • How much would a standard utility patent cost a micro entity applicant? (Question: FEE4525)

    As of March 19, 2013, a standard utility patent will cost a micro entity approximately $1145. The micro entity filing, search, and examination fees for a utility applicaiton are $70, $150, and $180, respectively, for a total of $400. Additionally, the micro entity issue and publication fees for a utility application are $445 and $300, respectively, for a total of $745. If a micro entity applicant files a large size application containing an excessive number of claims or extends the time to reply to Office actions, then additional fees will accrue. Further, beginning on January 1, 2014, the micro entity utility applicaiton issue and publication fees will be reduced to $240 and $0, respectively, creating significant additional savings for a micro entity applicant.

  • When must an applicant determine micro-entity status? (Question: FEE4522)

    Qualification for micro entity status must be determined at the time any fee is paid at the micro entity discount rate.

  • Can an applicant for a pending application filed before March 19, 2013, pay micro entities fees after March 19, 2013? (Question: FEE4520)

    Yes, eligibility for the micro entity discount is determined at the time that a fee is due and not as of the filing date of the application. That is, if an application is due to pay a fee after March 19, 2013 and qualifies as a micro entity, then the applicant may pay micro entity reduced fees, regardless if the application was filed before the micro entity discount became effective on March 19, 2013. To pay micro entity reduced fees, the applicant must file a certification of micro entity status prior to, or at the time, the fees are first paid in the micro entity amount.

  • If there is more than one inventor named in a patent application as the applicant, and if one of the inventors assigns his ownership rights in the application to an assignee, what qualifications do the inventors and/or the assignee have to meet to secure the micro entity discount? (Question: FEE4515)

    Under the "gross income" basis, the inventor and the assignee must certify that each meets the gross income limit. Additionally, the inventor must certify that he/she meets the applicaiton filing limit.

    Under the "institution of higher education" basis, the inventor must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education. Additionally, the assignee must certify that it qualifies as a small entity.

  • If an inventor assigns his ownership rights in an invention to an assignee and if the assignee files a patent application as the applicant, what qualifications do the inventor and/or the assignee have to meet to secure the micro entity discount? (Question: FEE4510)

    Under the "gross income" basis, the inventor and the assignee must certify that each meets the gross income limit. Additionally, the inventor must certify that he/she meets the application filing limit, and if the assignee is a natural person, then the assignee also must certify that he/she meets the application filing limit.

    Under the "institution of higher education" basis, a natural person assignee must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher educaiton; or has assigned, granted, or cnonveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher educaiton. A juristic entity assignee is unlikely to qualify for micro entity status under the "institution of higher education" basis.

  • If an inventor is named in a patent application as the applicant and if the inventor assigns his ownership rights in the application to an assignee, what qualifications do the inventor and/or the assignee have to meet to secure the micro entity discount? (Question: FEE4505)

    Under the "gross income" basis, the inventor and the assignee must certify that each meets the gross income limit. Additionally, the inventor must certify that he/she meets the application filing limit.

    Under the "institution of higher education" basis, the inventor must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education. Additionally, the assignee must certify that it qualifies as a small entity.

  • If there is more than one inventor named in a patent application as the applicant, do all of the inventors have to qualify as a micro entity to pay fees in the micro entity amount? (Question: FEE4500)

    Yes, if there is more than one inventor named in a patent applicatin as the applicant, each inventor must qualify for micro entity status to pay fees in the micro entity amount. The inventors may qualify for micro entity status individually under either the "gross income" basis or the "institution of higher educaiton" basis.

  • If all inventors on a patent application qualify for micro entity status, and if those inventors assign the application to their university-employer as a condition of their employment, can the university file as the "applicant" and secure the micro entity discount or should the inventors be named as the applicant in order to obtain the micro entity discount? (Question: FEE4450)

    The inventors should be named as the applicant for the micro entity discount to be available. If the university filed as the applicant, the university would not be eligible for the micro entity discount. Under the "gross income" definition, the university likely would not meet the "four previously filed applicatoins" limit. Likewise, under the "institution of higher educaiton" definition, the university itself would not either (i) be an employee of the "institution of higher educaiton" or obtain the majority of its income from such institution; or (ii) be a transferor of ownership rights to such institution. See Question FEE4415.

  • If an application is jointly assigned to an institution of higher educaiton and a corporation, and if both the institution and the corporation are designated as the applicant, does the application qualify for micro-entity status? (Question: FEE4445)

    No, the application will not qualify for micro entity status because each assignee named as the applicant must meet the § 1.29(d) requirements. Because the institution of higher educaiton cannot qualify under § 1.29(d) (see answer to Question FEE4415), the applicant cannot qualify.

  • Under the "institute of higher education" definition for micro entity status, is there a limit on the number of applications for which micro entity reduced fees are paid? (Question: FEE4440)

    No, the "institute of higher education" definition, unlike the "gross income" definition, does not contain any limit on the number of applications for which micro entity reduced fees are paid.

  • If a researcher is employed by an academic institution located in Puerto Rico or one of the U.S. territories, could the researcher qualify for micro entity status under the "institution of higher education" definition? (Question: FEE4435)

    Yes, a researcher at a university located in Puerto Rico or another U.S. territory might be eligible for micro entity status uder the "institute of higher education" definition, if all other requirements are satisfied. An "institute of higher education" is defined by the Higher Education Act of 1965 and that definition is incorporated into the micro entity statute. The Higher Education Act defines an "institution of higher education" as located a "state" where a "state" is further defined to be one of the states or territories of the United States. See also Questions FEE4405 and FEE4415.

  • Can a researcher working at a university located outside the U.S. (e.g., Japan) take advantage of the micro entity fee reductions under the "institution of higher education" definition for micro entity status? (Question: FEE4430)

    No, a researcher at a foreign university is not eligible for micro entity status under the "institution of higher education" definition because the micro entity statute, via incorporation of the Higher Education Act of 1965 for the definition of an "institute of higher education," limits eligible universities to those located in a "state" where a "state" is defined to be one of the states or territories of the United States. See also Questions FEE4405 and FEE4415.

  • If an inventor is a university employee and the university employee-inventor assigns the application to the Board of Trustees of the university, wil the micro-entity discount be available under the "institution of higher educaiton" basis? (Question: FEE4427)

    If the Board of Trustees of the university is listed as the applicant, the Board-applicant would qualify as a micro entity under the "institution of higher educaiton" definition for micro entity status only if the Board-applicant legally separate from the university and is: (1) an employee of the "institution of higher education" that obtains the majority of his or her income from such institution; or (2) a transferor of ownership rights to the "institution of higher education."

  • If a university is listed as an applicant, will the micro-entity discount be available under the "institution of higher education" basis? (Question: FEE4426)

    Probably no, if a university is listed as an applicant, the university-applicant likely would not qualify as a micro entity under the "institution of higher education" basis for micro entity status because the applicant must (1) be an employee of the "institution of higher education" and obtain the majority of his or her income from such institution; or (2) be a transferor of ownership rights to the "institution of higher educaiton." A university itself would not likely meet either of these conditions.

  • Can a university-applicant qualify as a micro entity under the "institution of higher education" basis for micro entity status? (Question: FEE4425)

    No, a university-applicant will not qualify as a micro entity under the "institution of higher education" defintion for micro entity status because the applicant must (i) be an employee of the "institution of higher education" and obtain the majority of his or her income from such institution; or (ii) be a transferor of ownership rights to such institution. A university itself would not meet either (i) or (ii). See also Question FEE4415.

  • If a university is physically located in a foreign country but offers online classes that are available in the United States, is the foreign university considered to be "located in a State" for purposes of micro entity status under the "institution of higher education" basis? (Question: FEE4422)

    No, the availability of an online education program in a State or territory of the United States does not make a foreign university that sponsors the program an "institution of higher education" for purposes of micro entity eligibility under the "institute of higher education" basis. The Higher Education Act of 1965, which is incorporated into the micro entity statute, defines an "institution of higher education" as being physically located "in any State."

  • If a foreign university offers an online education program that is accessible in a State or territory of the United States, could the university qualify as an "institution of higher educaiton" under the "institution of higher education" definition for micro entity status? (Question: FEE4420)

    No, the availability of an online education program in a State or territory of the United States does not make a foreign university that sponsors the program an "institution of higher education" for purposes of micro entity eligibility. The Higher Education Act of 1965, which is incorporated into the micro entity statute, defines an "institution of higher education" as being physically located "in any State." See also Question FEE4405.

  • Can a university identified as the applicant in a patent application qualify for micro entity status under the "institution of higher education" basis set forth in 37 C.F.R. 1.29(d)? (Question FEE4415)

    No, the requirements for micro entity status under the "institution of higher education" basis ordinarily would not be met by a university that is itself an assignee-applicant. Under the "institution of higher education" basis, assignee-applicant must certify small entity status as well as that (i) the applicant's employer, from which he/she obtains the majority of his/her income, is an institution of higher education; or (ii) the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher eucation. A university generally will be unable to make either certifications (i) or (ii). That is, a university is unlikely to be the "employee" of certification (i), and the university may be the assignee, but is not likely to be the assignor of the "ownership rights" of certification (ii). Accordingly identifying the university as the applicant, rather than the inventor (e.g., university researcher), normally would preclude eligibility for the micro entity discount under the "institution of higher educaitn" basis.

  • Can an institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory that is legally separate from a university located in the U.S. qualify as an "institution of higher education" for purposes of establishing micro entity status under the "institution of higher education" basis? (Question: FEE4410)

    No. An institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory does not qualify as an "institution of higher education" under the definition of "institution of higher education" set forth in the Higher Education Act of 1965 for purposes of establishing micro entity status.

  • What type of university is eligible as an "institution of higher education" for purposes of establishing micro entity status under 37 C.F.R. 1.29(d)? (Question: FEE4405)

    Section 101(a) of the Higher Education Act of 1965 defines what is meant by "institution of higher education" in the context of 3 C.F.R. 1.29(d). See 20 U.S.C. 1001. Section 101(a) of the Higher Education Act states that the term "institution of higher education" means:

    an educational institution in any State that --

    1. admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091(d)(3) of this title;
    2. is legally authorized within such State to provide a program of education beyond secondary education
    3. provides an educational program for which the institution awards a bachelor's degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary
    4. is a public or other nonprofit institution; and
    5. is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an instituion that has been granted pre-accreditation status by such an agency or association that has been recognized by the Secretary for the granting of pre-accreditation status, and the Secretary has determined that thre is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time."

    Additionaly, section 103 of the Higher Education Act of 1965 provides that the term "STate" means the 50 States of the United States as well as "the Commonwealth of Puerto Rico, the District of Columbia, Guam, American Samoa, the United States Virgin Islands, the Commonwealth of the Northern Mariana Islands, and the Freely Associated States" and that the Freely Associated States means the "Republic of the Marshall Islands, the Federated States of Micronesia, and the Republic of Palau." See 20 U.S.C. 1003.

    Based upon these definitions, public or non-profit institutions located in one of the 50 States or U.S. territories offering certain undergraduate educational programs credited toward a bachelor's degree or educational programs awarding "a degree that is acceptable for admission to a graduate or professional degree program" are eligible as an "institution of higher education" for purposes of establishing micro entity status under 37 CFR 1.29(d).

  • What are the requirements to establish micro entity status under the "institution of higher eduction" basis set forth in 37 C.F.R. 1.29(d)? (Question: FEE4400)

    An applicant for micro entity status under the "institution of higher education" basis set forth in 37 C.F.R. 1.29(d) must satisfy two requirements. First, the applicant must certify that he/she/it qualifies as a small entity under 37 C.F.R. 1.27. Second, the applicant must certify that either (i) the applicant's employer, from which he/she obtains the majority of his/her income, is an institution of higher education; or (ii) the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.

  • For the purposes of determing micro entity eligibility under the "gross income" basis where multiple inventors are named on an application, should the incomes of all co-inventors be totaled in determining whether the income limit is met? (Question: FEE4380)

    No, the income level requirement under the "gross income" basis for micro entity status applies to each applicant's and inventor's income separately (i.e., the combined gross income of all of the applicants and inventors need not be below the income limit),

  • If an application lists two inventors, one of whom has been listed as inventor on more than four previously filed patents applications, and the other has not; does that inventive entity qualify for micro-entity status under the "gross income" basis, assuming all other requirements are met? (Question: FEE4355)

    No, if an application names more than one applicant or inventor, each applicant and each inventor must meet the requirements for micro entity status under the "gross income" basis to file a micro entity certification in the application.

  • If each inventor named on a patent application has an annual income of $149,000 or less, and if the inventors collectively filed the application as the applicant, would the gross income requirement set forth in the "gross income" definition for micro entity status be met? (Question: FEE4350)

    Yes, assuming the "maximum qualifying gross income" posted on the USPTO website is still above $149,000 on the date of fee payment, the "gross income" limit would be met since each inventor's income is equal to or less than $149,000. But if any one inventor's income exceeds the "maximum qualifying gross income" at the time a fee is paid, then the "gross income" requirement would not be met, and the applicant could not pay any fee due in the micro entity amount.

  • Will the USPTO publish the gross income amount used in the "gross income" definition for micro entity status? If so, where and how frequently wil it be updated? (Question: FEE4345)

    Yes, the USPTO will publish, and update annually, the prevailing gross income amount on the USPTO website at http://www.uspto.gov/patents/law/micro_entity.jsp.

  • If an inventor-applicant initially pays patent service fees as a small entity and then experiences a reduction in income at the time of allowance, can the inventor-applicant then qualify as a micro entity under the "gross income" basis and pay the issue fee in the micro entity amount? (Question: FEE 4340)

    Yes, it is possible for a small entity applicant who does meet the gross income limits set forth in the "gross income" definition for micro entity status at the time the application was filed to meet the gross income limit at time the issue fee is due because of a reduction of income. Assuming the applicant meets the other requirements for micro entity status under the "gross income" definition, the applicant could certify entitlement to micro entity status and pay the isse fee in the micro entity amount.

  • If an applicant filed numerous non-provisional patent applications in connection with the applicant's previous employment, can the applicant qualify as a micro entity under the "gross income" definition after leaving that employment? (Question: FEE4335)

    Yes, the applicant potentially may still qualify as a micro entity. There is no limit on the number of previously-filed patent applications that may be excluded from the "four previously filed application" limit contained in the "gross income" definition for micro entity status on the basis of prior employment.

  • For the "four previously filed applications" limit set forth in the "gross income" definition of micro entity status, do national stage applications in other countries count or only national stage applications in the U.S.? (Question: FEE4330)

    A PCT application is a single application regardless of the number of countries in which it enters the national stage. A PCT application counts toward the "four previously filed applications" limit only if the basic natioinal fee under 35 U.S.C. 41(a) has been paid. Thus, U.S. national stage applications count in the "four previously filed applications" limit, but foreign national stage applications do not count.

  • Do provisional and non-provisional applications both count toward the filing limit for purposes of establishing micro entity status under the "gross income" basis? (Question: FEE4327)

    No, the application filing limit includes non-provisional applications, but not provisional applications. Likewise, the application filing limit excludes foreign applications and international (PCT) applications for which the basic U.S. national stage filing fee was not paid.

  • Are plant patent applications included in the "four previously filed patent applications" limit set forth in the "gross income" definition for micro entity status? (Question: FEE4325)

    Yes, plant applications are counted toward the "four previously filed applications" limit.

  • What types of applications count toward the applicatoin filing limit for purposes of establishing micro entity status under the "gross income" basis? (Question: FEE4320)

    For purposes of establishing micro entity status under the "gross income" basis, the application filing limit includes: (i) U.S. nonprovisional applications (e.g., utility, design, continuation, and divisional applications), (ii) U.S. reissue applications, and (iii) U.S. national stage applications under the Patent Cooperation Treaty (PCT). It does not matter whether the applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.

    The application filing limit does not include: (i) foreign applications; (ii) international (PCT) applications for which the basic U.S. national stage filing fee was not paid; and (iii) provisional applications. In addition, the application filing limit does not include applications where an applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant's, inventor's, or joint inventor's previous employment.

  • What effect does marital status have on "gross income" insofar as whether the inventor's tax return is filed jointly, rather than separately, for purposes of meeting the gross income requirement under the "gross income" basis? (Question: FEE4315)

    Regardless whether an applicant, inventor, or joint inventor filed a joint tax return rather than a separate tax return in the preceding calendar year, the "gross income" limit applies to the amount of income the person would have reported as gross income if that person filed a separate tax return, which includes, for example, properly accounting for that person's portion of interest, dividends, and capital gains from joint bank or brokerage accounts.

  • How can an applicant determine whether he/she/it meets the gross income limit for purposes of determining entitlement to micro entity status under the "gross income" basis? (Question: FEE4310)

    For purposes of qualifying for micro entity status on the "gross income" basis, an applicant, inventor, or joint inventor cannot have a gross income during the calendar year when a fee is paid exceeding three times the median household income for the preceding calendar year, as reported on the USPTO website. What constitutes "gross income" for this context is defined by section 61(a) of the Internal Revenue Code of 1986. See 27 U.S.C. 61(a).

    Notably, the gross income limit may change each calendar year. Therefore, if the prosecution of an application extends across multiple calendar years, an applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity discount. If the gross income limit is not met, then a notification of loss of entitlement to micro entity status must be filed in the application to remove micro entity status.

  • Where can I find the gross income limit for purposes of determining entitlement to micro entity status under the "gross income" basis? (Question: FEE4305)

    The USPTO will post the gross income limit on the USPTO website. The gross income limit will be referred to as the "maximum qualifying gross income." Effective September 17, 2013, the maximum qualifying gross income is $153,051.

  • What are the requirements to establish micro entity status under the "gross income" basis set forth in 37 C.F.R. 1.29(a)? (Question: FEE4300)

    An applicant for micro entity status under the "gross income" basis set forth in 37 C.F.R. 1.29(a) must satisfy four requirements. First, the applicant must certify that he/she/it qualifies as a smallentity under 37 CFR 1.27. Second, the applicant must certify that neither the applicant nor the inventor nor a joint inventor has been named as an inventor on more than four preivously filed patent applications. Third, the applicant must certify that neither he applicant nor the inventor nor a joint inventor had a gross income exceeding three times the median household income for the preceding calendar year, as most recently reported by the Bureau of the Census. Lastly, the applicant must certify that neither the applicant nor the inventornor a joint inventor has assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) in the subject application to an entity that had a gross income in the preceding calendar year in excess of the gross income limit.

  • Is micro entity status available for both AIA and pre-AIA applications? (Question: FEE4220)

    Yes, micro entity status is available for both AIA and pre-AIA applications. A micro entity certification may be filed in a pending AIA or pre-AIA application at any time during prosecution and in a patent issued under the AIA or pre-AIA law prior to, or concurrent with, a maintenance fee payment.

  • If an inventor-applicant licenses a pending patent application to a large entity corporation, can the inventor-applicant qualify as a micro entity? (Question: FEE4215)

    No, if an applicant assigns, grants, conveys, or licenses any rights in an application to a party that does not qualify as a small entity under 37 CFR 1.27, then the applicant cannot qualify for any patent fee discount as either a micro entity or a small entity. In order to qualify for micro entity status, no party can hold rights or obligated rights in an application that does not qualify at least as a small entity.

  • If an applicant does not qualify as a "micro entity," would the aplicant automatically be considered a "large entity?" (Question: FEE4205)

    No, an applicant that does not qualify for micro entity status may qualify for small entity status. A small entity is entitled to a 50 percent reduction in patent service fees. An applicant may qualify as a small entity if the applicant is an individual person meeting the conditions set forth in 37 CFR 1.27(a)(1), a small business concern meeting the conditions set forth in 37 CFR 1.27(a)(2), or a not-for-profit organization meeting the conditions set forth in 37 CFR 1.27(a)(3).

  • What are the eligibility requirements for micro entity status? (Question: FEE4200)

    To qualify as a micro entity, an applicant must meet either of two sets of conditions. As a first option, an applicant can establish a limited income and limited experience with the patent application filings. See 37 C.F.R. 1.29(a). As a second option, an applicant can establish employment by, or an assignment or obligation to assign to, an institution of higher education. Under either option, an application also must satisfy the requirements for small entity status. See 37 C.F.R. 1.29(d).

  • When does the micro entity discount become available? (Question: FEE4110)

    The micro entity discount becomes available on March 19, 2013. The micro entity discount gives a 75% reduction in fees associated with filing, searching, examing, issuing, appealing, and maintaining patent applications and patents.

  • If I meet the definition of a micro entity set forth in the AIA, will I be able to pay a micro entity fee beginning on the date of enactment - September 16, 2011? (Question: FEE4100)

    No. The AIA does not permit the USPTO to apply the 75% micro entity fee discount until the micro entity fee for a specific item is set or adjust using the fee setting authority provided in section 10 of the act.

  • When will the USPTO begin collecting the additional $400 (and $200 for small entity) for an original patent application (except for a design, plant, or provisional application) that is not filed electronically? (Question: FEE3000)

    This new fee will be effective at 12:00 a.m. on Tuesday, November 15 2011. This fee applies to a patent application filed by mail, rather than via the Office's electronic filing system (EFS-Web). This includes PCT international applications filed with the USPTO as the Receiving Office. All applications filed by mail or hand delivery on or after November 15, 2011, must include the additional $400 ($200 for small entity) fee. Requests for Continued Examination (RCE) are not subject to the additional $400 ($200 for small entity) fee.

  • Did the 15% increase to certain patent fees impact the FY 2011 fee collections? (Question: FEE2050)

    Yes, the USPTO collected and was able to spend almost $5 million more in patent fees during FY 2011 related to the 15% fee increase and the prioritized examination fee. However, the timing of enactment of the AIA led to an unfortunate rush on fee payments during the 10 days from AIA enactment (September 16, 2011) to the fee increase effective date (September 26, 2011). Prior to enactment of the AIA, the USPTO estimated taht it would collect approximately $70 to $80 illion more than the $2.090 billion it was authorized to spend. The rush on fee payments triggered an additional $139 million in FY 2011 fee collections above the $2.090 billion authorized level. The total $209 million in fees above the USPTO's FY 2011 appropriation are not available for the USPTO to spend on operations. The USPTO estimates that about half of these unavailable fees are collections that other wise would have been recieved in FY 2012.

  • On June 27, 2011, the USPTO issued a notice of proposed rulemaking to adjust certain patent fee amounts for fiscal year 2012 to reflect fluctuations in the Consumer Price Index (CPI). DOes the office plan to implement this increase in addition to the 15% patent fee increase in the AIA? (Question: FEE2040)

    No. GIven the timing of the enactment of the AIA so close to the beginning of fiscal year 2012, the USPTO does not plan on implementing the CPI for fiscal year 2012.

  • What will happen if I forget to pay the increased fee amount on or after September 26, 2011? (Question: FEE2030)

    The applicable fee amount is the amount in effect on the day the fee is paid. If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees. Applicants are encouraged to provide authorizatioin in the application file to change fees to a specified Deposit Account to avoid insufficient payment of fees.

  • Are there any patent fees that will not be increasing by 15%? (Question FEE2020)

    Yes. Fees such as international stage PCT fees, certain petition fees, enrollment fees, and service fees will not be increasing by 15%.

  • I would like to ensure that I am paying the proper amount. How do I determine the new fee rates after applying the 15% increase? (Question FEE2010)

    The specific fees that will be increased by 15% are listed in the table here. The entire updated fee schedule can be found at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp.

  • On what date will I have to begin paying the 15% increase on patent fees? (Question: FEE2000)

    The 15% increase in fee rates will become effective at 12:00 a.m. on Monday, September 26, 2011.

  • Are there any other fees required upon filing a Request for Prioritized Examination (Track I)? What happens if one of the required fees is not present upon filing? (Question: FEE1010)

    Consult the current fee schedule available at http://www.uspto.govabout/offices/cfo/finance/fees.jsp for the correct fee amounts. The fees required to be paid upon filing for prioritized examination are:

    1. Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant applicatoin, 37 CFR1.16(c)
    2. Search fee, as set forth in 37 CFR 1.16(k), or for a plant aplication, 37 CFR 1.16(m)
    3. Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).
    4. Publication fee, as set forth in 37 CFR 1.18(d)
    5. Track I processing fee, as set forth in 37 CFR 1.17(i).
    6. Track I prioritized examination fee of $4800.00 ($2400.00 for small entities)
    7. If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s)
    8. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, asset forth in 37 CFR 1.16(h).
    9. If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i)

    If any fee is unpaid at the time of filling of the application, the request for Piroritized Examination will be dismissed. However, if an explicit authorization to change any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

  • How much is the fee for prioritized examination and when will it be effective? (Question: FEE1000)

    The new fee for prioritized examination will be effective at 12:00 a.m. on Monday, September 26, 2011. The fee rates for large and small entities are listed below. Like all fees, the USPTO is not authorized to apply a micro entity discount to the prioritized exam fee without setting the fee using the section 10 fee setting process.

    CFR Section Fee Code Description 9/26/2011 Fee
    (i.e., post-AIA enactment)
    1.17(c) 1817 Request for Prioritized Examination $4,800.00
    1.17(c) 2817 Request for Prioritized Examination $2,400.00
  • Can the parties to a derivation proceeding engage in settlement? (Question: DER1080)

    Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.

  • In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way? (Question: DER1070)

    Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

  • Can a party to a derivation proceeding appeal the Board's final decision? (Question: DER1060)

    Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

  • How will the Board conclude a derivation proceeding? (Question: DER1050)

    The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application without authorization.

  • What is the standard for instituting a derivation proceeding and who will decide whether the standard is met? (Question: DER1040)

    A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding.

  • What statutory requirements must a petitioner meet in a petition for a derivation proceeding? (Question: DER1030)

    In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

  • What are the requirements for seeking a derivation proceeding? (Question DER1020)

    A derivation prroceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with paticularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioiner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application's claim to the invention.

  • What is the effective date for the derivation provision in the AIA? (Question: DER1010)

    The effective date for the derivation provision in the AIA is March 16, 2013.

  • What is the impact of AIA's amendment to 35 U.S.C. 282(a)(3) concerning Best Mode? (Question: BM3)

    The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As state above, this new practice does not affect the patent examination practice.

  • Does AIA's amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112? (Question: BM2)

    No. As this change is applicable only in patent validity or infringement proceedings, it does not change current patent examination practices set forth in MPEP § 2165.

  • What is the effective date for the Best Mode provision in the AIA? (Question: BM1)

    The effective date for the Best Mode provision in the AIA is September 16, 2011.

  • I already submitted comments through the aia_implementation@uspto.gov email address. May I also submit comments in response to a Notice of Proposed Rule Making on the same topic(s)? (Question: C3)

    Yes. Comments submitted through the aia_implementation@uspto.gov email address are being considered before the Office issues a Notice of Proposed Rule Making (NPRM). Timely filed comments responding to a NPRM should address what is promulgated in the proposed rules. These comments should be submitted to the email address designated in the NPRM.

  • Do I have to wait for a Notice of Proposed Rule Making to comment on a specific provision of the AIA? (Question: C2)

    No. The Office encourages you to submit your comments to aia_implementation@uspto.gov and requests that your subject line reference the topic or AIA provision(s) that your comments address. Given the tight implementation time frames resulting from the AIA, preliminary input from our stakeholders and the public on implementation of the key provisions would facilitate our review process.

  • If I would like to submit comments on the Notices of Proposed Rule Making that the Office will be issuing, but cannot finish my comments by the due date, may I have an extension to submit them? (Question: C1)

    Due to the tight enactment time frames of the AIA and the rule making process, the Office does not anticipate being able to accommodate extension requests to submit comments.