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Historic Patent Reform Implemented by USPTO

Written by U.S. Patent and Trademark Office
Posted: September 17, 2012 @ 5:19 pm
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Washington – The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.

Some of the new rules are as follows:

  • Three new administrative trial provisions — inter partes review, post-grant review, and the transitional program for covered business method patents—will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent. Additional information on third party submissions can be found here.
  • The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
  • The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
  • The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.

“These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “And that will translate into opportunity, growth, and jobs for large and small innovators across America.”

At 12:01 a.m. on Sunday, September 16, members of the Patent Trial and Appeal Board (PTAB) stayed open for 24 straight hours, accepting petitions requesting a variety of legal reviews. With the new rules in effect, the PTAB came into being, having been reconstituted by the AIA from the previous review board, the Board of Patent Appeals and Interferences.

The USPTO has also created new means of contact for the public to access assistance or information about the new AIA provisions: via 1-855-HELP-AIA or HELPAIA@uspto.gov.

A number of AIA provisions have already begun the implementation process, adjustments that enabled the USPTO to immediately hire new examiners, institute new patent acceleration tools, and aggressively modernize its IT infrastructure The AIA also instructed the USPTO to open new satellite offices, and the USPTO is moving forward on opening offices in Dallas-Fort Worth, Denver, and Silicon Valley. The USPTO opened a Detroit satellite office in July.

Other provisions of the AIA will go into effect on March 16, 2013, including the shift to a first-inventor-to-file system harmonizing the U.S. system with most industrialized nations. A Notice of Proposed Rulemaking has been published proposing the new rules and the final rule for the new Derivation Proceeding to ensure that the first inventor to file obtains the patent has already been published.

7 comments
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  1. “The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality”.

    Somebody clearly drank the koolaid. I don’t know a single practitioner who thinks this whole mess is a good idea and clients hate it. Please note you need to add “that cost exorbitant and prohibitive amounts of money” to the end of this sentence.

  2. To all:

    Anon has astutely noted a major disconnect between pre-issuance submissions under the AIA and existing 35 USC 122(c) (Protest and Pre-Issuance Opposition) which says:

    “The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.”

    From my reading of Sec. 8 of the AIA on pre-issuance submissions, it does not overturn this proscription in 35 USC 122(c) against such pre-issuance submissions for published applications unless there is the “express written consent of the applicant.” I tip my hat to anon!

  3. [...] USPTO issued a rather self-congratulatory press release on Monday, and the White House got in on the AIA celebration with an article by Quentin Palfry, [...]

  4. EG,

    My namesake would probably let you know that the proper credit goes to ChicagoPatAtty with their link to

    http://www.marshallip.com/

    See http://www.patentlyo.com/patent/2012/09/pre-issuance-submissions.html

  5. I have read the Section 8 of the America Invents Act again, along with the notice of final rules by the USPTO, and I I concur with EG.

    There simply is no way that the Office rules comport with the law.

    The Office seems to kick up some dust with comparisons to protests, but as I understand it, protests, have their own safeguards in place tied to the state of publication and the Office legal requirement of protecting an applicant (and all of this ties back to the delicate legal balancing that Congress engineered when Congress forced a pre-issue publication scheme onto the innovation community (which, obviously, I feel strongly against)). However, and this should be emphasized, any such changes in the law by the Office are substantive and outside of their authority. It cannot be denied that this was an area that Congress set in place and that only Congress can change.

    I would note that in its Rulemaking Considerations section, the Office does note that the changes in final rules concern the patent application process and do not change the substantive criteria for patentability – however, per Tafas (e.g. search and “suicide disclosure” requirements were also considered illegal) and that thus, this statement of non-substantive-patentability-criteria is not enough to allow the Office to change something Congress has deliberated on.

    The fact that Congress did not amend the requirement of applicant permission and in fact added the new sub-section into the section with the applicant permission section, the necessity of averment that the one supplying the preissuance submission has complied with the entire section means at the very least any such inclusion into the official record without the legally required applicant permission raises an issue of legal challenge against the Office in a court of law (article III court). The Office in several places of the Final Rules misstates the law as requiring compliance with a sub-section of 35 USC 122; rather than (as the law is clearly written) “this section.”

    I think what we have here is a Tafas replay.

  6. Why is NOBODY asking where the Section 3(l) “Effect on Small Business” report is? It was due no later than the 1-year anniversary. It seems the PTO, the White House, the Congress, and the SBA have all forgotten all about this important little requirement.

  7. Robert,

    The absence of the report was noted on the Patently-O website (in the comments section of one of the threads).

    If I recall, Goldilocks is trying to find a middle ground between blasting the AIA as bad for small business and being believable as good for small business.