USPTO Issues Final Rules for the America Invents Act

Earlier this month, the U.S. Patent and Trademark Office published a set of final rules implementing various provisions of the America Invents Act that go into effect on September 16, 2012. 

For your reference, here’s a look at five key provisions:

1. Supplemental examination procedures:

“The new supplemental examination procedures set forth in 35 U.S.C. § 257 provide that a patentee may request supplemental examination of a patent to “consider, reconsider, or correct information believed to be relevant to the patent.” Only the patent owner may request a supplemental examination. The primary goal of the supplemental examination is to provide patentees with an alternative to litigating inequitable conduct allegations” (Bracewell & Giuliani) 

2. Third party submissions of prior art:

“On September 16, 2012, final rules issued by the U.S. Patent and Trademark Office that implement provisions of the Leahy-Smith America Invents Act related to preissuance submissions by third parties become effective. The rules modify existing practice by allowing third parties to submit documents with a concise description of relevance of each document submitted in the same or greater time period than previously allowed. The rules, once effective, apply to any application filed before, on, or after September 16, 2012.” (Venable) 

3. Inter partes review of patents:

“Inter partes reexamination of patents will be replaced by inter partes review. Inter partes review (IPR) is similar to the inter partes reexamination that it replaces but has some notable differences. A third-party—not patentee—may file an IPR after nine months from grant of any patent (regardless of filing date) or after a post grant review (PGR) is terminated. The IPR request must establish a ‘reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged.’” (Patton Boggs) 

4. Inventor oath upon application:

“Under the final rules, any person to whom the inventor has assigned the invention, or who otherwise shows sufficient proprietary interest in the matter, may file an application for a patent. The most significant change in the final rules is who can be considered an applicant… For an assignee or obligated assignee filing the application as the applicant, the final rules provide that the documentary evidence of ownership should be recorded no later than the date the issue fee is paid in the application. Notwithstanding, the inventors must execute an oath or declaration in the application.” (White & Case) 

5. Post-grant review of certain business method patents:

“Perhaps the post-grant proceeding to be employed most initially will be the post-grant review for covered business method patents. The proceeding may provide the most petitioner-friendly avenue for challenging a patent of all the other post-grant proceedings. In addition to patents and printed publications, review under this proceeding may also be instituted based on evidence of knowledge or use prior to the alleged invention, thereby expanding the universe of eligible prior art compared to inter partes review.” (Morrison & Foerster) 

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Read the updates:

• New America Invents Act Provisions Set to Become Effective in September 2012 - Bracewell & Giuliani LLP 

• USPTO Unveils Final Rules for the America Invents Act - White & Case LLP 

• USPTO Issues Rules Implementing America Invents Act - Venable LLP 

• Fast and Furious (Toward Patents): USPTO Issues Final Post-Grant Rules - Morrison & Foerster LLP 

• Proposed First-to-File Rules and Examination Guidelines Open for Comment - Kilpatrick Townsend 

• Important Provisions of The America Invents Act Take Effect in September -Patton Boggs LLP 

• Final Rules Published - Pillsbury Winthrop Shaw Pittman LLP 

• USPTO Issues Final Rules: Citation of Prior Art and Written Statements in a Patent File – Venable LLP 

• USPTO Issues Final Rules: Definitions for the Transitional Program for Covered Business Method Patents – Venable LLP 

• USPTO Issues Final Rules: Inventor’s Oath or Declaration – Venable LLP 

• USPTO Issues Final Rules: Preissuance Submissions by Third Parties – Venable LLP 

• USPTO Issues Final Rules: Supplemental Examination, Inter Partes Transition Rules, and Post-Grant Proceedings – Venable LLP 

• USPTO Issues Several Final Rules for Implementing AIA Provisions – McDonnell Boehnen Hulbert & Berghoff LLP 

• America Invents Act Implementation: Countdown To First-To-File - Dickinson Wright 

• USPTO Issues Final Rule to Implement Miscellaneous Post Patent Provisions of AIA - McDonnell Boehnen Hulbert & Berghoff LLP 

• Final rules on Changes to Implement Miscellaneous Post Patent Provisions of the AIA - Pillsbury Winthrop Shaw Pittman LLP 

• AIA Rules Going Into Effect September 16, 2012 - McDonnell Boehnen Hulbert & Berghoff LLP 

• Patent Reform Act: Implications For Your Business - Snell & Wilmer L.L.P. 

• USPTO Issues Final Rule for Implementing Statute of Limitations Provisions for Office Disciplinary Proceedings - McDonnell Boehnen Hulbert & Berghoff LLP 

• USPTO Publishes Final Rules for Preissuance Submissions - Jeffrey Sheldon 

• USPTO Releases Proposed First-Inventor-to-File Rules and Examiner Guidelines - Morrison & Foerster LLP 

• USPTO Issues Final Rule for Preissuance Submissions - McDonnell Boehnen Hulbert & Berghoff LLP 

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