The U.S. Patent and Trademark Office (USPTO) recently released proposed rules for implementing the First Inventor to File provisions of the America Invents Act (AIA).  The new rules take effect on March 16, 2013. 

According to the proposed rules, a claim for priority and a certified copy of the foreign application must be filed in an application, other than a design application, within the later of four months from the actual filing date of the application or 16 months from the filing date of the prior foreign application, and the claim for priority must be presented in the application data sheet.  If an application is a national phase application, the claim for priority must be made and a certified copy of the foreign application filed within the time limit set forth in the Patent Cooperation Treaty (PCT).  If a nonprovisional application filed on or after March 16, 2013 claims the benefit of the filing date of a foreign application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to an invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the application, four months from the date of entry into the national stage, 16 months from the filing date of the prior foreign application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the application.  If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a foreign application filed prior to March 16, 2013, does not contain a claim to an invention that has an effective filing date on or after March 16, 2013, but discloses subject matter not also disclosed in the foreign application, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage, or 16 months from the filing date of the prior foreign application.  The applicant does not have to identify how many or which claims in the nonprovisional application have an effective filing date on or after March 16, 2013.  If an applicant fails to timely provide such a statement and then later indicates that the nonprovisional application contains a claim having an effective filing date on or after March 16, 2013, or subject matter not also disclosed in the foreign application, the USPTO may issue a requirement for information requiring the applicant to identify where there is written description support in the foreign application for the remaining claims in the nonprovisional application. 

The proposed rules would also require that in order to claim the benefit of a prior-filed provisional application, a provisional application must disclose the invention claimed in at least one claim of the later-filed application in the manner provided by 35 U.S.C. § 112(a).  If a nonprovisional application claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or at any time contained, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant would be required to provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage, 16 months from the filing date of the prior filed provisional application, or the date that a first claim to an invention that has an effective filing date on or after March 16, 2013, is presented in the application.  Further, if a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, does not contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013, but discloses subject matter not also disclosed in the provisional application, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage, or 16 months from the filing date of filing of date of the later-filed application. 

As proposed in the rules, if an applicant fails to timely provide such a statement and then later indicates that the nonprovisional application contains a claim having an effective filing date on or after March 16, 2013, or subject matter not also disclosed in the provisional application, the USPTO may issue a requirement for information requiring the applicant to identify where (by page and line or paragraph number) there is written description support. 

Furthermore, the proposed rules require that no cross-references to any application(s) for which no priority benefit is claimed may be included in an application data sheet.  In addition, the proposed rules provide that subject matter that qualifies as prior art under 35 U.S.C. § 102(a)(2) will be treated as commonly owned with the claimed invention for purposes of 35 U.S.C. §  102(b)(2)(C) if the applicant provides a statement that the prior art and the claimed invention were owned by the same person or subject to an obligation of assignment to the same person.  This provision is analogous to the present removal of prior art references under 35 U.S.C. § 103(c), but to disqualify anticipatory references. 

The proposed rules would further define the effective filing date of a claim in a patent application, other than in a reissue application, as the earliest of the actual filing date of the patent or the application for the patent containing a claim to the invention; or the filing date of the earliest application for which the patent or application is entitled, as to such invention, to priority to or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121 or 365.

The proposed rules also contain provisions for filing an affidavit or declaration under 37 C.F.R. § 1.130 to traverse rejections based on public disclosures of the claimed subject matter by a party who obtained the subject matter from the inventor, or by showing an earlier public disclosure of the subject matter on which the rejection is based by the inventor.  Affidavits and declarations under Rule 1.130 would not available if the rejection is based upon a disclosure made more than one year before the effective filing date of the claimed invention.  

The deadline for submitting written comments on the proposed rules is October 15, 2012.  The USPTO requests comments be sent via email to fitf_rules@uspto.gov

Third Party Prior Art Submissions

The USPTO also recently published final rules for Preissuance Submissions by Third Parties, which are effective September 16, 2012.  Third parties can submit prior art for consideration by the USPTO by payment of a required fee if the prior art is submitted before the earlier of  the date of a mailing of a Notice of Allowance or the later of six months after the date on which the application is published or the date of a first rejection.  In accordance with 37 C.F.R. § 1.290, a Preissuance Submission must contain a list identifying the items being submitted, a concise description of the relevance of each item submitted, a legible copy of each non-US patent document submitted, an English translation of any non-English language item listed, a statement by the party making the submission that the submission complies with the statute and the rule.  The fee for a Preissuance Submission is $180 for each 10 references or fraction thereof.  There is an exemption to the fee if the Preissuance Submission is the first submission of the third party or a party in privity with the third party in a given application, and no more than three references are cited.

Statute of Limitations Provisions for Disciplinary Proceedings

Finally, the USPTO also recently released the final rules for the Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings.  The USPTO adopted three rules to administer the new procedure:  a disciplinary complaint shall be filed within one year after the date on which the Office of Enrollment and Discipline (OED) Director receives a grievance forming the basis of a complaint, and in no event more than 10 years after the date on which the misconduct forming the basis of the proceeding occurred; a grievance is defined as a written submission from any source received by the OED director that presents possible grounds for discipline of a specified practitioner; and the one-year period for filing a complaint may be tolled by written agreement.  In order to satisfy the definition of a grievance, the submission must identify the practitioner alleged to have engaged in misconduct and present information or evidence sufficient to enable the OED director to determine whether possible grounds for discipline exist.  A practitioner can agree in writing to a tolling of the one-year period for filing a complaint to provide both the USPTO and the practitioner with additional time to resolve matters without filing a complaint.