Earlier today, while working on revamping the PLI Patent Bar Review Course, I needed a citation to the MPEP and an associated Code of Federal Regulations cite. It was as this time I noticed there has been a change to how the MPEP is presented on the USPTO website. Perhaps others have noticed and this is not news, but it is the first time I’ve encountered an issue finding information in the MPEP from the USPTO for a very long time.
One of my responsibilities is to write exam level difficult questions for the newly testable material, which will be tested starting October 2, 2012. This means questions relative to the changes in the rules of practice effective September 16, 2012. This requires me to not only write the questions, but also create model answers. We strive not only to explain generally what the right answer is, but to also provide a greater opportunity for learning, which requires detailed explanations.
It was at this time that I realized that the USPTO has reclassified the Manual of Patent Examining Procedure, changing the URLs where sections were located previously, making them unfindable if you use a search engine. In some instances my search even leads to “Page Not Found” errors when searching on the USPTO website itself.
The “miscellaneous” final rules primarily implement two things. First, section 6 of the AIA to provides for an estoppel that may attach to the filing of an ex parte reexamination request subsequent to a final written decision in a post grant review or inter partes review proceeding. See 37 CFR 1.510(b)(6). Second, the final rules expand the scope of information that a person may cite in the file of a patent to include written 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 the patent.
With respect to the first, relating to ex parte reexamination, USPTO rules will now require that a third party request for ex parte reexamination contain a certification by the third party requester that the statutory estoppel provisions apply to completed inter partes reviews and post grant reviews do not bar the third party from requesting ex parte reexamination. Cosmetically, the final rules also implement Section 3(i) of the AIA, which replaces interference proceedings with derivation proceedings, and replaces the title ‘‘Board of Patent Appeals and Interferences’’ with ‘‘Patent Trial and Appeal Board.”
President Obama signs the AIA. September 16, 2011.
The America Invents Act (AIA) was signed into law by President Obama on September 16, 2011. The AIA ushered in numerous changes to patent law, but there will be even more changes to patent practice and procedure. The way many things are done at the USPTO on behalf of clients will change, with the next wave of changes becoming effective on September 16, 2012, on the one year anniversary. Over the next several weeks we will be taking some detailed looks at these changes, as well as flashing back to remember the passing of patent reform.
We begin our journey today with the Supplemental Examination Final Rules, which were published in the Federal Register on August 14, 2012. Section 12 of the AIA amended chapter 25 of title 35, United States Code, to add new 35 U.S.C. 257, which permits a patent owner to request supplemental examination of a patent by the United States Patent and Trademark Office. The purpose of supplemental examination is to provide an avenue for the patent owner to ask the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. Although supplemental examination goes into effect on September 16, 2012, it can be used for any patent issued on, before or after September 16, 2012.
The United States Patent and Trademark Office (USPTO) announced today that it is creating a new proceeding designed to ensure the first person to file a patent application is actually the true inventor. The new proceeding will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. If a true inventor is not the first to file, the true inventor may challenge the first applicant’s right to a patent by demonstrating that the first application is claiming an invention derived from the true inventor.
This new procedure, called a derivation proceeding, is required thanks to the enactment of the Leahy-Smith America Invents Act (AIA), which went into effect on September 16, 2011. The AIA ushers in a great many changes to patent law and procedure, with the most significant being the change from first to invent to first to file, which does not actually become effective until March 16, 2013. The flavor of first to file adopted by the AIA is not the typical first to file system seen in many other jurisdictions around the world. The American flavor still provides a grace period, although it is peculiar to the inventors own disclosures and can be defeated by subsequent disclosures of third parties. The grace period is, therefore, quite fragile to the point that it is virtually non-existent. Much concern was voiced, however, over whether one could learn of an invention and then win a race to the USPTO. That is where the derivation proceedings come into play. The U.S. version of first to file is better stated as “first inventor to file.”
One of the primary objectives of the America Invents Act (AIA) was to streamline the filing and prosecution of patent applications. Under the AIA, the oath or declaration requirements for applicants have been substantially modified, with assignees now being permitted to apply for patents effective September 16, 2012. Provisions of the AIA (35 USC § 118) allow an assignee, or one to which the inventor is obligated to assign the invention, to make an application for patent. Additionally, a party who has a “sufficient proprietary interest” in the invention may make an application for patent as an agent of the inventor upon “proof of pertinent facts” of such interest.
35 USC § 115(d) permits the “applicant” to make a substitute statement in lieu of an oath/declaration under certain permitted circumstances, such as the death or incapacity of an inventor or an inventor’s refusal to sign an oath/declaration when the inventor is under obligation to assign the invention to the applicant. Also, an “individual” under obligation to assign can now, in an assignment document, make the required oath/declaration and other requirements as instituted by the Director under §§ 115(b) and 115(c).
On September 6, 2012, the United States Patent and Trademark Office published proposed rules in the Federal Register setting or adjusting fees for patent related services. In proposing patent fees the USPTO is for the first time seeking to exercise the fee setting authority established under Section 10 of the America Invents Act (AIA). According to the Federal Register Notice, the proposed fees are appropriate to cover patent operations at the Office, as well as create a “sustainable funding model” that will work toward further reduction in the patent application backlog. The fees are also set with an eye toward a necessary “upgrade [of] the Office’s patent business information technology (IT) capability and infrastructure.”
Now begins a two month public comment period. In order to ensure consideration, those wishing to submit written comments must do so no later than November 5, 2012. Comments should be sent by electronic mail message over the Internet addressed to: firstname.lastname@example.org. Further, these proposed fees will be fair game for discussion at the AIA Roadshows scheduled throughout the United States during the month of September.
The recurring theme will be decreased fees for those who qualify for micro-entity status, but increased fees for everyone else. Decreased fees for micro-entity status are appreciated, but they will not even apply to all independent inventors, but only a subset of independent inventors who are at the lowest end of the income scale and who have had very few patents or patent applications. Thus, even the professional garage inventor will be a small entity and will pay more — in some cases substantially more — than they pay now. Not to mention the small businesses that are the engine of the U.S. economy. These fees will be a real and substantial impediment to the patent process for those individuals and businesses that we need to be encouraging and incentivizing the most.
Director Kappos delivering remarks during the FTF Roundtable, Sept. 6, 2012.
On September 6, 2012, the United States Patent and Trademark Office held a Roundtable on the campus of the USPTO in Alexandria, Virginia. The Roundtable event was for the purpose of the USPTO accepting feedback from the user community on the proposed examination guidelines to implement the first-to-file changes of the America Invents Act (AIA), which go into effect on March 16, 2013.
While there were many issues raised, the one issue on which there seemed overwhelming consensus (although not unanimity) was with respect to the USPTO’s interpretation of the new grace period. A substantial majority of those who offered comments disagreed with the USPTO’s interpretation of 102(b)(1)(B), which pertains to disclosures made by third parties. The USPTO’s interpretation of this provision was set forth in the Federal Register on Thursday, July 26, 2012.
After the pre-scheduled speakers concluded their remarks at the roundtable those in attendance were invited to make remarks. At that time I was recognized and went to the podium to speak on behalf of the USPTO interpretation of the grace period. After my remarks there were no other remarks, but a Q&A session began, with many of those who spoke asking questions of the USPTO Officials in attendance, who were surprisingly willing to provide insight into their interpretations. I say surprisingly because these events are typically not a forum where the USPTO shares information.
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