On August 14, 2012, the United States Patent and Trademark Office (“USPTO”) published final rules in the Federal Register to implement various Sections of the Leahy-Smith America Invents Act (“AIA”). Sections 4, 8 and 12 are discussed in detail below. Section 4 of the AIA changes the requirements for an inventor’s oath or declaration and the filing of a patent application by a person other than the inventor. Section 8 relates to the preissuance submissions by third parties. Section 12 creates a new supplemental examination procedure before the USPTO. The final rules implementing these sections take effect on September 16, 2012.

AIA Section 4: Inventor’s Oath or Declaration and Application by a Non-Inventor

1. Inventor’s Oath or Declaration

The USPTO’s final rules contain several changes to requirements for an inventor’s oath or declaration accompanying a patent application. Significantly, an oath or declaration no longer must be filed within (an extendable) two months of filing an application for a patent. Instead, the oath or declaration may be filed at any time until the application is otherwise in condition for allowance if, prior to examination, an applicant provides an application data sheet describing the name, residence, and mailing address of each inventor. However, the Office will continue to consider an application incomplete pending submission of an accompanying oath or declaration, and thus will continue to assess a surcharge for delays in filing. It should be noted that an oath or declaration will still be required for a reissue application prior to examination.

The oath and declaration must include statements by the inventor that the application was made or authorized by the individual executing the document, and that the individual believes himself or herself to be an original inventor or joint inventor of the application. The rules also provide several changes to the required information an oath or declaration must have. The oath or declaration is no longer required to: 1) identify an inventor’s country of citizenship; 2) name each inventor, if an applicant instead provides an application data sheet with inventor information; 3) state that the inventor believes that he/she is the first inventor; 4) contain foreign priority claims; 5) state that the person executing the oath has reviewed and understands the contents and acknowledges the duty of disclosure to the Patent Office; 6) state that the inventor has reviewed and understands the application; and 7) contain a statement acknowledging that willful false statements may jeopardize the application and that all statements are true or believed to be true. With respect to items 5 and 6, however, an individual may not execute the oath or declaration without being aware of the duty to disclose, and without reviewing and understanding the contents of the patent application.

2. Application by Non-Inventors

The final rules adopted by the USPTO now permit non-inventor applicants (e.g., an assignee or an entity to which an inventor has an obligation to assign) to file a substitute statement if an inventor is deceased, legally incapacitated, cannot be found, or refuses to execute an oath or declaration. Substitute statements must contain the necessary information for the oath and declaration, must identify the inventor to whom the statement applies, identify the person executing the statement and the relationship to the inventor, and must state the basis for the submission. Proof of unavailability is no longer required, but rather a summary statement of facts. It should also be noted that assignments may serve as an appropriate oath or declaration if it includes the necessary statements and a copy of the assignment is recorded with the USPTO.

AIA Section 8: Preissuance Submission

Section 8 of the AIA dictates the submission of prior art by third parties. Under the rules, third parties may submit materials prior to any notice of allowance, or the later of (i) six months after publication or (ii) the date of first rejection of any claims. Third parties may submit printed publications of potential relevance to the USPTO for consideration by the assigned Examiner. The submissions are limited to “printed publications” but need not be prior art. Each submissions is handled in the manner akin to an Information Disclosure Statement by submitted by the applicant(s).

Each submission must include a document listing, a concise description of the documents, and must include a statement of compliance, translations if necessary, copies of non US patents or publications, and the appropriate fee if required. If a submission is a first submission by a third party containing three or fewer documents, no fee is required. However, a fee is required for submissions of every 10 documents. If the submission is non-compliant, there is no fee refund. No service is required to the applicant(s), however the applicants will be notified of compliant submissions.

AIA Section 12: Supplemental Examination

Section 12 of the AIA allows a patent owner to request supplemental examination of the patent to consider, reconsider, or correct information believed to be relevant to the patent. Only a patent owner having full ownership is allowed to request examination. The patent owner cannot be a partial owner in the patent. The final rules allow for a single request to include up to twelve new items of information, each of which raising one or more issues of patentability. Multiple submissions in parallel are acceptable.

Items of information are not limited to patents and printed. Information may take the form of audio or video clips, which must be accompanied by an English transcript. The request for supplemental examination must contain (i) an identification of the patent at issue; (ii) a list of the information submitted for consideration; (iii) a detailed explanation of the relevance to each claim; (iv) summary of relevant portions of documents exceeding fifty pages; and (v) appropriate fees. Fees for the these requests are extensive, including a filing fee of $5,140 and a reexamination fee, if ordered, of $16,120.

The final rules state that a supplemental examination request will not be afforded a filing date until the request complies with the Office’s requirements. Thus, it will be important for requestors to ensure a complying request is filed in order to protect their patent from attack under the first exception raised below. Within three months of receiving a complying request, the Office will make a determination as to whether any new item of information raises a substantial new question of patentability. If such determination is made, the Office will initiate an ex parte reexamination proceeding.

A patent will not be unenforceable due to inequitable conduct relating to any information addressed in a supplemental examination request. However, this exclusion does not apply: 1) if, prior to the supplemental examination filing date, an allegation of inequitable conduct is plead with particularity in a civil suit; or 2) to any defense based on the conduct raised in a patent infringement suit that is filed before the supplemental examination and any required corresponding ex parte reexamination are completed. Upon completion of the review of any submitted information, a supplemental examination certificate will be issued.

Conclusion

The final rules have been implemented in an effort to streamline prosecution. Importantly, the new rules will need to be reviewed in terms of their applicability to previously filed applications as well. Additional rules have been issued regarding Administrative Trials provisions. These proceedings are discussed in the next article "Overview of the New Post-Grant Trial Procedures at the USPTO."