As set forth in the final rules published in the August 14, 2012 Federal Register, assignees will be able to file and prosecute U.S. patent applications filed on or after September 16, 2012. The USPTO’s rules implement changes to 35 USC § 118 embodied in the America Invents Act (AIA), and bring U.S. patent practice in line with most other countries that do not require inventors to be the “applicants” on patent applications. However, these rule changes apply only to U.S. applications filed under 35 USC § 111(a) on or after September 16, 2012, and U.S. national phase applications based on PCT applications filed under 35 USC § 363 on on or after September 16, 2012.
On August 14, 2012, the USPTO published the final rule packages for implementing the patent reform changes that take effect September 16, 2012. Several colleagues and I prepared Legal News Alert articles which provide an overview of key changes embodied in the rules.
This article looks at some of the key provisions relating to an assignee’s ability to file and prosecute patent applications, changes to the inventor oath/declaration requirements, changes to reissue application practice, simplified procedures for correcting inventorship, the heightened importance of application data sheets, and the elimination of “without deceptive intent” requirements.
This article looks at the new rules for the new supplemental examination proceedings and pre-issuance submissions by third parties.
This article looks at the four rules packages which implement the new trial proceedings that will be conducted by the Patent Trial and Appeal Board (Board), including inter partes review, post-grant review, and the transitional program for covered business method patents.
Learning More About The Final Rules
We will be providing more in-depth reviews of the final rules packages on PharmaPatentsBlog over the next few weeks. In addition, as noted above, the USPTO is holding several AIA roadshows across the country in September, where USPTO representatives will explain the new rules.
Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012. This program will give attendees an opportunity to understand how interference and inter partes examination have influenced the new proceedings, to discuss how these new options may impact business strategies, and to learn proactive steps that can be taken now to prepare for the changes to come. Scheduled featured guest speakers include Teresa Stanek Rea, Deputy Under Secretary of Commerce for IP and Deputy Director of the USPTO and James D. Smith, Chief Administrative Patent Judge, USPTO. Featured speakers from Foley & Lardner LLP include Matthew A. Smith, Partner and Chair, Patent Office Trials Practice, and Andrew S. Baluch, Special Counsel and Vice Chair, Patent Office Trials Practice.
As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet reviewed all of the final rules, it appears that the USPTO took public comments into consideration and made significant changes to some of the proposed rules. Applicants and practitioners should study the final rules packages and consider attending a USPTO “AIA roadshow,” where USPTO representatives will explain the new rules. Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012. Continue reading this entry
In a Federal Register Notice issued December 1, 2011, the USPTO issued a final rule that tweaks the patent term adjustment rules to permit applicants to promptly file McKesson-type Information Disclosure Statements (IDSs) without incurring a patent term adjustment deduction. The rule change took effect on December 1, 2011.
(The Federal Register Notice indicates that previously proposed changes to the calculation of patent term adjustment when the USPTO reopens prosecution after a Notice of Appeal are being revised and will be published for comment separately.) Continue reading this entry
The USPTO’s final Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals includes new rules relating to new grounds of rejection on appeal, and new guidance on what constitutes a “new” ground of rejection in an Examiner’s Answer. Although the new rules only apply to cases in which a Notice of Appeal is filed on or after January 23, 2012, the guidance is based on older Federal Circuit and CCPA decisions (and in accord with the recent Federal Circuit decisions in In Re Leithem, In Re Stepan Co. and cases cited therein) and so should be applicable now.