On September 16, 2012, a host of changes to U.S. patent law went into effect. These changes address everything from miscellaneous fees to supplemental examinations and the prioritization of examinations for important technologies. A summary of these changes is set forth below.
- Miscellaneous Patent Fees - document fee for third-party submissions - $180
- Patent Petition Fees - Petition for reexamination - $1,930
Post Issuance Fees
- Request for ex parte reexamination - $17,750
- Request for supplemental examination - $5,140
- Reexamination ordered as a result of supplemental examination - $16,120
- Supplemental Examination Document Size Fee (for non-patent document having between 21-50 sheets) - $170
- Supplemental Examination Document Size Fee (for each additional 50 sheets or a fraction thereof) - $280
Patent Trial and Appeal Fees
- Petition to institute an inter partes review - $27,200
- Challenged claims in excess of 20 for an inter partes review - $600
- Petition to institute a post-grant or a covered business method review - $35,800
- Challenged claims in excess of 20 for a post-grant or covered business method review - $800
- Request to make a settlement agreement and other requests filed in a patent trial proceeding - $400
Inventor Oath or Declaration
- A separate declaration form must be filed for each inventor
Inventor's oath or declaration must now contain the following statements:
- the application was made or was authorized to be made by the declarant
- such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application
Pre-issuance Submissions by Third Parties
Any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application. The pre-issuance submission must be made before the earlier of: date a notice of allowance is given or mailed; OR the later of six (6) months after the date on which the application is first published; or the date of first rejection of any claim by the examiner.
Inter Partes Reexamination Replaced by Inter Partes Review (IPR)
A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may file an IPR. An IPR petitioner may request to cancel, as unpatentable, one or more claims of a patent only on a ground that could be raised under §§ 102 or 103 and only on the basis of prior art consisting of patents or printed publications. An IPR cannot be filed until after the later of (1) nine (9) months after the grant of a patent or issuance of a reissue of a patent; or (2) the date of termination of any post grant review of the patent.
A patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent. The request may address any condition for patentability (e.g., 35 U.S.C. §§101, 102, 103, 112 and double patenting). The information is not limited to patents and printed publications. Third parties may not file a request to participate.
Patent Trial and Appeal Board
The Board of Patent Appeals and Interferences (BPAI) is replaced with the Patent Trial and Appeal Board (PTAB) with duties including:
- reviewing adverse decisions of examiners
- reviewing appeals of reexaminations
- conducting derivation proceedings
- conducting inter partes reviews
Advice of Counsel
The failure of an infringer to obtain the advice of counsel with respect to any allegedly infringed patent, or the failure of the infringer to present such advice to the court or jury, may not be used to prove that the accused infringer willfully infringed the patent or that the infringer intended to induce infringement of the patent.
Citations of Written Statements
Any person may not cite to the USPTO for inclusion into the record patent statements of the patent owner filed in a proceeding before a federal court or the office in which the patent owner took a position on the scope of any claim of a particular patent.
Priority Examination for Important Technologies
The USPTO may now provide for the prioritization of examination of applications that are for products, processes, or technologies important to the national economy or national competitiveness.