USPTO Issues Proposed Rules to Implement America Invents Act

In January 2012, the United States Patent and Trademark Office (USPTO) published proposed multiple sets of rules aimed at implementing the America Invents Act (AIA), which was enacted on Sept. 16, 2011. The publication is the first in a series of Notices of Proposed Rulemaking in the Federal Register related to proposed rules implementing various provisions of the AIA. The proposed new rules address five provisions of the new law.

Specifically, the newly-published proposed rules focus on the following AIA provisions:

· Inventor’s oath and declaration – Revises and clarifies the rules of practice relating to the inventor’s oath or declaration, including reissue oaths or declarations, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors. Namely, the new rules allow an application to be filed by a person to whom the inventor has assigned, or is under an obligation to assign, the invention or by a person who otherwise shows sufficient proprietary interest. Moreover, the new rules authorize an individual who is under an obligation of assignment to include certain required statements in an executed assignment in lieu of filing these statements in a separate oath or declaration. Furthermore, identification of each applicant’s citizenship would no longer be required by statute. Lastly, the requirement of without deceptive intention has been deleted from all related sections. As proposed, these rules would apply to any patent application that is filed on or after Sept. 16, 2012.

· Third party submission of prior art in a patent application – Allows third parties to submit printed publications of potential relevance to examination and requires a concise explanation of the asserted relevance of each document submitted, to pay the associated fees, and to include a statement by the submitting third party that the submission is being made in compliance with new 35 U.S.C. 122(e). The new rule further requires that such a submission be made before the earlier of:

1. the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or

2. the later of:

a. six months after date on which the application is first published under 35 U.S.C. 122, or

b. the date of first rejection under 35 U.S.C. 132 of any claim in the application.

As proposed, these rules would apply, effective Sept. 16, 2012, to any pending patent application.

· Citation of prior art in a patent file – Expands the scope of information that any party may cite in a patent file, to include written statements made by a patent owner before a Federal court or the USPTO regarding the scope of any claim of the patent, but limits the use of such written statements to determining the meaning of a patent claim in ex parte reexamination proceedings that have already been ordered and in inter partes review and post grant review proceedings that have been instituted. As proposed, this provision would become effective on Sept. 16, 2012.

· OED Statute of Limitations – Requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the USPTO, and specifies when the one-year statute of limitations commences depending on the type of complaint that initiated the disciplinary proceeding. As proposed, this provision would become effective on Sept. 16, 2012.

· Supplemental Examination/Ex Parte Re-Exam – Sets forth how the supplemental examination process will work. Specifically, the rules note that only the patent owner can request supplemental examination and each supplemental examination request may only identify up to ten items to be considered, reconsidered or corrected. If a patent owner has more than ten items, the patent owner will need to submit multiple requests, which can be filed simultaneously. At the time of filing, the patent owner will need to pay $5,180 for the request and $16,120 for the ex parte re-examination fee. While both are required at the time of filing, the re-examination fee will be refunded if a re-examination is not ordered. Not only are the filing fees high, there are additional fees for documents over 20 pages in length and fees for petitions filed in connection with the proceeding. The rules define the requirements that must be met to file the request - a cover sheet, identifying the patent to be examined, a list of the items to be considered, identifying any other prior or concurrent post patent USPTO proceeding involving the patent to be examined, identification of each issue raised by each item of information, a separate/detailed explanation of the issues, explanation of the relevancy of the identified information, a copy of each identified information, and a summary of any submitted document over 50 pages in length. In addition, these set of rules provide that the ex parte re-examination fee will be increased from $2,520 to $17,750. As noted in Ice Miller's original summary of the America Invents Act, it is not surprising to see high fees associated with the new supplemental examination process and fee increases for the ex parte re-examination procedures in view of the new responsibilities of the USPTO.

Publication of these proposed rules officially opens a 60-day public comment period for each rule package. The USPTO has encouraged the patent community to provide feedback on the proposals, as is the intent of the sixty-day comment period. Once the comment period ends, the USPTO will draft final rules, which are targeted to be published by the end of July 2012.

In the coming weeks, the USPTO will publish additional AIA-related proposed rules in the Federal Register for public comment. The soon-to-come proposed rule publications cover supplemental examination, post-grant review, inter partes review, transitional program for covered business methods, and derivation proceedings. Stay tuned to The Ice Loop and the Ice Miller website for additional information on those proposed rules as they are published.

Full text of the current proposed rules can be found at:

http://www.gpo.gov/fdsys/pkg/FR-2012-01-05/pdf/2011-33811.pdf

http://www.gpo.gov/fdsys/pkg/FR-2012-01-05/pdf/2011-33813.pdf

http://www.gpo.gov/fdsys/pkg/FR-2012-01-06/pdf/2011-33815.pdf

http://www.uspto.gov/aia_implementation/77fr3666.pdf

This publication is intended for general information purposes only and does not and is not intended to constitute legal advice. The reader must consult with legal counsel to determine how laws or decisions discussed herein apply to the reader's specific circumstances.