Now that 2011 is coming to an end and I am catching my breath and getting organized for 2012, I thought it would be a good time to consider the USPTO’s plans for implementing the provisions of the America Invents Act that take effect September 16, 2012. According to the USPTO’s Leahy-Smith America Invents Act Implementation webpage, the USPTO will be publishing proposed regulations as early as mid-January.
The Basic Timeline
The USPTO expects to publish proposed regulations for its “Group 2 Rulemakings” in mid- to late-January 2012. These proposed rules will cover the following subject matter:
- Inventor’s Oath/Declaration
- Third Party Submission of Prior Art for Patent Application
- Supplemental Examination
- Third party submission of prior art in a patent file
- Inter Partes Review
- Post Grant Review
- Transitional Program for covered Business Method Patents
Publication of proposed rules will open a 60-day comment period, when members of the public can submit comments and suggestions on the specific proposed rules. The USPTO will take those comments into consideration and publish final rules in August 2012, with an effective date of September 16, 2012. The USPTO will open a short comment window after the final rules are published in August and consider whether any further changes are warranted before the September 16, 2012 implementation date.
Preliminary Comments
According to the USPTO’s Leahy-Smith America Invents Act Implementation webpage, the USPTO had received 163 comment submissions as of November 30, 2011. The comments can be viewed through the USPTO’s AIA Comments webpage.
The following chart shows the breakdown of the preliminary comments by subject matter. 
Preliminary comments on the USPTO’s new fee-setting authority and the new micro-entity status can be submitted through late February 2012.
Preliminary comments on the “Group 3 Rulemakings” (relating to First-Inventor-to-File, Derivation Proceedings, and the Repeal of Statutory Invention Registration) can be submitted through mid-March 2012.
The Importance Of Public Comments
The America Invents Act makes the most sweeping changes to U.S. patent law since at least the 1952 Patent Act. Although the statute itself is of primary importance, the implementing regulations will have a direct impact on the patent process, from filing to grant to post-grant review. The USPTO is encouraging public comments and promising to take them all into account.
We encourage you to share your input during these windows and be part of making AIA a success in its implementation.
In the coming months, we have a unique opportunity to shape the regulations that we will be working under for years to come, but we will have to do our part by taking the time to review the proposed regulations and provide our views to the USPTO.
