A large number of provisions of the America Invents Act took effect on Sunday, September 16, 2012. This article summarizes the main changes to patent prosecution resulting from those provisions.
Several changes apply to U.S. patent applications filed on or after September 16, 2012. First, an assignee (or party to whom the inventors are obligated to assign the invention) can now act as the applicant. If the assignee elects to file as the applicant, the assignee must execute a power of attorney document. Second, the executed inventor oath/declaration can be submitted at the close of prosecution, in response to a Notice of Allowance. However, the inventor information must still be provided in an Application Data Sheet at the time the application is filed or within the Missing Parts response period. Moreover, the inventor oath/declaration require different forms than those used before. Additionally, the inventor oath/declaration can be included in a combined assignment/declaration document. Third, for reissue applications filed on or after September 16, 2012, the requirements for the reissue oath/declaration are simplified. However, if a broadening reissue is sought, the applicant is required to identify a claim that the applicant seeks to broaden. Fourth, the requirements for correction of inventorship and changing the order of inventors have been simplified. And finally, third parties can submit any patent, published patent application, or other printed publication of potential relevance to the examination of an application.
Several changes apply to U.S. patents in force on or after September 16, 2012. First, patent owners can request a supplemental examination proceeding to obtain consideration, reconsideration, or correction of information believed to be relevant to the patent. Under certain circumstances, pursuing supplemental examination can shield the patent from unenforceability arising out of inequitable conduct charges surrounding the information at issue. Second, third party requesters for ex parte reexamination must certify that their request is not barred by statutory estoppel arising out of an inter partes review or post-grant review proceeding. Finally, inter partes review is more “trial-like” now and will be conducted in front of the new Patent Trial and Appeal Board within the U.S.P.T.O.
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