Category Archives: Patent Reform

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Maximizing The Effect Of Patent Applications As Prior Art Under The AIA

Now that we are less than one month away from implementation of the First-Inventor-To-File provisions of the America Invents Act (AIA), stakeholders are considering whether to file new patent applications now, to secure examination under the current First-To-Invent patent system, or wait until March 16, 2013, so that the applications will be governed by the … Continue reading this entry

A First Look At The Final First Inventor To File Rules

The USPTO’s final First Inventor To File rules and Examination Guidelines were published in the February 14, 2013 edition of the Federal Register. While many of the final rules are identical to the proposed rules, there are some important changes to note.… Continue reading this entry

A Look At The Technical Amendments To The America Invents Act (AIA) Made By HR 6621

On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the … Continue reading this entry

Countdown To The Ides Of March

As of today, we are two months from March 15, 2013–the last day to secure an effective filing date under the current “first to invent” patent system. While we still are waiting for the USPTO to publish its final rules implementing the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), most of those rules … Continue reading this entry

House, Senate Pass Changes To America Invents Act And Patent Term Adjustment

The Senate has passed a modified version of HR 6621, which focuses on changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act” and also includes other provisions unrelated to the AIA, such as those impacting Patent Term Adjustment (PTA). The President is expected to sign the bill soon, and it will take effect … Continue reading this entry

USPTO Publishes Final Micro Entity Rules

The USPTO has published final rules governing the new Micro Entity status that will permit certain patent applicants to pay certain patent fees at a 75% reduced rate. The rules set forth three independent ways to qualify for Micro Entity status: (i) based on the income of each applicant, (ii) based on each applicant’s employer … Continue reading this entry

USPTO Offers Guidance On Supplemental Examination

The USPTO has published “Tips for Filing a Compliant Supplemental Examination Request” on its AIA Implementation web page. According to the notice, the USPTO has received six requests for Supplemental Examination, but apparently not all of them complied with the USPTO’s rules. Luckily for patent owners, requests for Supplemental Examination are not made public unless and until they … Continue reading this entry

House Passes HR 6621, Spares Pre-GATT Patents

The U.S. House of Representatives passed an amended version of HR 6621 that does not includes the provisions that could have effectively eliminated the term of any pending patent applications that were filed before June 7, 1995 (“pre-GATT applications”). Instead, the bill requires the USPTO to submit a “report” on pre-GATT applications. (The bill still … Continue reading this entry

HR 6621 Would Add New Barriers To Patent Term Adjustment (PTA) Appeals

Although most of HR 6621 (introduced by Rep. Lamar Smith on Nov. 30, 2012) would make changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act,” the bill includes other provisions that are entirely unrelated to the AIA and that would dramatically impact patent term. The provision receiving the most public attention would … Continue reading this entry

The Limited Scope Of The New Derivation Proceedings

Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such … Continue reading this entry

USPTO Extends First-To-File Comment Period To November 5, 2012

The USPTO has announced that it has “reopened” the comment period for the proposed implementing regulations for the first-to-file provisions of the America Invents Act (“AIA”) which take effect March 16, 2013.  Public comments now will be accepted until November 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some … Continue reading this entry

First-To-File Comments Due October 5, 2012

Although the first-to-file provisions of the America Invents Act (“AIA”) do not take effect until March 16, 2013, public comments on the USPTO’s proposed implementing regulations are due by Friday, October 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took … Continue reading this entry

USPTO Publishes Final Derivation Rules

Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.… Continue reading this entry

Join Me On September 18 For A Webinar On Supplemental Examination

On Tuesday, September 18, 2012, at 2:00 pm eastern, I will be speaking on the IPO IP Chat Channel webinar on “Supplemental Examination: Rules & Strategy.”  My distinguished co-panelists are Robert Bahr, Senior Patent Counsel in the USPTO’s Office of Patent Examination Policy, and Kurtis MacFerrin, Patent Counsel at Google Inc. We will be reviewing … Continue reading this entry

What Will Be Different On Monday? (The September 16, 2012 Patent Reform Changes)

The next wave of U.S. patent reform changes embodied in the Leahy-Smith America Invents Act takes effect on Sunday, September 16, 2012. The following is a list of some of the things that will be different when we come to work on Monday. Because of the different effective date provisions, some of these changes will … Continue reading this entry

First To File Practice: An Alternative Interpretation Of The Grace Period Shielding Disclosure Exception

I was honored to participate in the USPTO’s First-Inventor-To-File Roundtable yesterday (September 6, 2012). One issue raised by several speakers was the USPTO’s proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art under the first-to-file provisions of the America Invents Act (“AIA”). In a previous article I highlighted the … Continue reading this entry

First To File Practice: Mandatory Derivation Proceedings?

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

USPTO Requires New PRPS E-Filing System For New Patent Trials

 The USPTO is developing a new electronic filing and case management system for the new patent trial proceedings that become available on September 16, 2012. According to new 37 CFR § 1.46(b) which takes effect on September 16, 2012, unless “otherwise authorized,” all submissions to the Board “are to be made . . . electronically … Continue reading this entry

First To File Practice: Commonly Owned Applications

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

USPTO To Permit Assignees To File And Prosecute Patent Applications

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 … Continue reading this entry

First To File Practice: Grace Period Shielding Disclosures

This is the third article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013. … Continue reading this entry

An Overview Of The Final Patent Reform Rules Packages Effective 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 … Continue reading this entry

USPTO Issues Final Rules For America Invents Act Provisions That Take Effect September 16, 2012

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 … Continue reading this entry