The U.S. Patent and Trademark Office (USPTO) has issued proposed changes to its rules of practice to implement the new “first inventor to file” patent system adopted under the Leahy-Smith America Invents Act (AIA). Comments are requested by October 5, 2012.
Among other matters, to change the current rules of practice pertaining to the existing “first to invent” patent-filing system, USPTO would add certain definitions to title 37 of the Code of Federal Regulations, as well as provisions “for the submission of affidavits or declarations showing that: (1) A disclosure upon which a claim rejection is based was by the inventor or joint inventor or by a party who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor; or (2) there was a prior public disclosure by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.” USPTO is also “proposing to provide for the situation in which a U.S. patent or U.S. patent application has a prior art effect as of the filing date of a foreign priority application by requiring that the certified copy of the foreign application be filed within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application.”
The proposed changes would also include the elimination of provisions “directed to statutory invention registrations” and the addition of “requirements for nonprovisional applications filed on or after March 16, 2013, that claim the benefit of the filing date of a foreign, provisional, or nonprovisional application filed prior to March 16, 2013.”
Public comments are also sought on USPTO’s new Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the AIA. According to the agency, “These guidelines will assist Office personnel in, and inform the public of how the Office is, implementing” these new provisions. Comments must be submitted by October 5.
In a related matter, USPTO will host a series of “roadshows” across the country in September to provide information about new final rules adopted under the AIA pertaining to preissuance submissions by third parties. According to a USPTO statement, “The final rules relate to provisions for inventor’s oath/ declaration, preissuance submission, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review.” The final rules are expected to be published in the Federal Register by August 16 and take effect September 16. Roadshow sessions will be conducted in Minneapolis, Minnesota (9/10); Alexandria, Virginia (9/12); Los Angeles, California (9/14); Denver, Colorado (9/17); Detroit, Michigan (9/20); Atlanta, Georgia (9/24); Houston, Texas (9/26); and New York City, New York (9/28). See USPTO Press Release, July 26, 2012.