PharmaPatents Timely Insight on Emerging Legal Developments

Category Archives: USPTO Proposed Rule Changes

U.S. and USPTO Move To Implement The Patent Law Treaty of 2000

Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

While U.S. patent practitioners have been focusing on the changes to U.S. patent law embodied in the Leahy-Smith America Invents Act (AIA), Congress has taken additional steps to harmonize and streamline patent application procedures in accordance with an international treaty, the Patent Law Treaty of 2000 (PLT). The Patent Law Treaties Implementation Act of 2012 (PLTIA) was enacted on December 18, 2012, with a one-year effective date of December 18, 2013. The USPTO has published proposed rules to implement the PLT provisions, and will consider written comments received by June 10, 2013. Stakeholders will be interested to see the changes that relax the requirements for securing an application filing date, provide some flexibility in making a priority claim after the priority term has expires, and eliminate the “unavoidable” standard for reviving abandoned applications and obtaining acceptance of delayed fee payments.

Continue reading this entry

USPTO Rules Eliminate Inter Partes Review Dead Zone

Posted in Patent Reform; Patent Trials; USPTO Proposed Rule Changes

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013, and relate to statutory changes with an effective date of January 14, 2013.

The Dead Zone

The AIA created two new procedures for challenging a patent within the USPTO: Post Grant Review and Inter Partes Review. As enacted, Post Grant Review only can be requested within the first nine months after a patent grants, and Inter Partes Review only could be requested thereafter. However, Post Grant Review only is available for patents examined under the first-inventor-to-file provisions of the AIA (which only apply to certain applications filed on or after March 16, 2013). This created a “dead zone” for patents that are not subject to Post Grant Review, because they could not be challenged within the USPTO within the first nine months after grant or reissue.

The AIA Technical Corrections Act

The AIA Technical Corrections Act stemmed from HR 6621, and eliminated the Inter Partes Review dead zone by providing that the nine month time period restriction does not apply to patents that are were not examined under the first-inventor-to-file provisions of the AIA. Thus, under the AIA Technical Corrections Act, an Inter Partes Review proceeding to challenge a “first-to-invent” patent or reissue can be brought anytime once the patent or reissue is issued.

By the terms of the AIA Technical Corrections Act, these statutory changes took effect on January 14, 2013 (the date of enactment) and apply to proceedings commenced on or after that date.

The USPTO Rule Change

To implement these statutory changes, the USPTO has amended 37 CFR § 42.102(a) to read as follows:

(a) A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:
(1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
(2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent; or
(3) If a post-grant review is instituted as set forth in subpart C of this part, the date of the termination of such post-grant review.

A “patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act,” is a patent that was not examined under the first-inventor-to-file provisions of the AIA, the applicability of which is set forth in section 3(n)(1) of the AIA. Using the short-hand used in the Federal Register Notice, a “patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act,” is a “first-to-invent” patent.

No Notice And Comment Period

As noted above, the USPTO published the final rule changes on March 25, 2013 and the rule changes have an effective date of March 25, 2013. The USPTO explained why this rule change was not subject to a notice and comment period:

Good cause exists to make these procedural changes without prior notice and opportunity for comment and to be effective immediately so as to avoid inconsistencies between regulations and the AIA Technical Corrections Act.

An Important Correction

This correction could be important to patents that may be involved in litigation, because the Inter Partes Review statute requires that a petition for Inter Partes Review be brought within one year after the petitioner has been served with a complaint alleging infringement. Without the correction, an accused infringer would have to wait until nine months after grant to petition for Inter Partes Review, even if  the one year clock was running.

USPTO Proposes To Require Disclosure Of Patent Ownership, Exclusive Licenses

Posted in USPTO Proposed Rule Changes

Last year, on November 23, 2011, the USPTO announced that it was considering collecting information on patent ownership and requiring disclosure of patent ownership information throughout the patent application process. Although written comments were due by January 23, 2011, the USPTO has not issued any response to public comments. Instead, in a Federal Register Notice issued November 26, 2012, the USPTO announced that it is considering promulgating regulations that would require the disclosure of “real party in interest” (RPI) information throughout the patent application process and after grant. The USPTO is holding a “roundtable” to discuss this proposal on Friday, January 11, 2013, at its Alexandria, Virginia campus. Requests to participate in the roundtable must be submitted by Friday, December 21, 2012. Written comments on the proposal are due by  Friday, January 25, 2013.Continue reading this entry

USPTO Proposes Changes To Rules Of Professional Responsibility, Elevates Duty Of Disclosure Over Client Confidentiality

Posted in Duty of Disclosure; Patent Office Practice; USPTO Proposed Rule Changes

In a Federal Register Notice published October 18, 2012, the USPTO announced proposed changes to its rules of professional responsibility that would replace the current rules with rules based on the ABA Model Rules of Professional Conduct, with some modifications. While most of the proposed rules are familiar, a few appear to elevate the duty of disclosure over client confidentiality obligations in ways that may conflict with some state bar rules of professional responsibility. The USPTO will consider written comments received by December 17, 2012.Continue reading this entry

The Limited Scope Of The New Derivation Proceedings

Posted in Patent Reform; USPTO Proposed Rule Changes

Under the first-to-file provisions of the Leahy-Smith America Invents Act (AIA), the USPTO no longer will institute interference proceedings in order to determine who was the first person to invent a claimed invention. While an applicant will be able to petition the USPTO to institute a derivation proceeding, the statute and implementing regulations provide for such proceedings under only very limited circumstances.Continue reading this entry

USPTO Extends First-To-File Comment Period To November 5, 2012

Posted in Patent Reform; USPTO Proposed Rule Changes

The USPTO has announced that it has “reopened” the comment period for the proposed implementing regulations for the first-to-file provisions of the America Invents Act (“AIA”) which take effect March 16, 2013.  Public comments now will be accepted until November 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took effect on September 16, 2012 in view of public comments. Indeed, the decision to reopen the comment period was made in response to “several requests,” and underscores the agency’s interest in receiving thoughtful input from applicants, practitioners and other stakeholders. Continue reading this entry

First-To-File Comments Due October 5, 2012

Posted in Patent Reform; USPTO Proposed Rule Changes

Although the first-to-file provisions of the America Invents Act (“AIA”) do not take effect until March 16, 2013, public comments on the USPTO’s proposed implementing regulations are due by Friday, October 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took effect on September 16, 2012 in view of public comments. Applicants, practitioners and other stakeholders should not miss this opportunity to shape how the USPTO implements these significant changes to U.S. patent law. Continue reading this entry

USPTO Publishes Final Derivation Rules

Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

Although derivation proceedings only will be available for U.S. patent applications with an effective filing date on or after March 16, 2013, the USPTO already has published its final rules implementing the derivation provisions of the Leahy-Smith America Invents Act (AIA). The final rules embody several changes and clarifications as compared to the proposed rules.Continue reading this entry

What Will Be Different On Monday? (The September 16, 2012 Patent Reform Changes)

Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

The next wave of U.S. patent reform changes embodied in the Leahy-Smith America Invents Act takes effect on Sunday, September 16, 2012. The following is a list of some of the things that will be different when we come to work on Monday. Because of the different effective date provisions, some of these changes will impact granted patents and/or pending patent applications, as well as new U.S. patent applications filed on or after September 16, 2012.Continue reading this entry

First To File Practice: An Alternative Interpretation Of The Grace Period Shielding Disclosure Exception

Posted in Patent Reform; USPTO Proposed Rule Changes

I was honored to participate in the USPTO’s First-Inventor-To-File Roundtable yesterday (September 6, 2012). One issue raised by several speakers was the USPTO’s proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art under the first-to-file provisions of the America Invents Act (“AIA”). In a previous article I highlighted the USPTO’s controversial interpretation set forth in the USPTO’s proposed examination guidelines. Here, I offer an alternative interpretation of 35 USC § 102(b)(1)(B). Continue reading this entry

First To File Practice: Commonly Owned Applications

Posted in Patent Reform; USPTO Proposed Rule Changes

This is the fourth article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art, and the proposed requirements for invoking the “grace period shielding disclosure” exception to prior art. Here, I look at the expanded prior art exception for commonly owned patent applications.Continue reading this entry

USPTO To Permit Assignees To File And Prosecute Patent Applications

Posted in Patent Reform; USPTO Proposed Rule Changes

As set forth in the final rules published in the August 14, 2012 Federal Register, assignees will be able to file and prosecute U.S. patent applications filed on or after September 16, 2012. The USPTO’s rules implement changes to 35 USC § 118 embodied in the America Invents Act (AIA), and bring U.S. patent practice in line with most other countries that do not require inventors to be the “applicants” on patent applications. However, these rule changes apply only to U.S. applications filed under 35 USC § 111(a) on or after September 16, 2012, and U.S. national phase applications based on PCT applications filed under 35 USC § 363 on on or after September 16, 2012.

Continue reading this entry

USPTO Changes Post-Notice Of Appeal Patent Term Adjustment Rules

Posted in Patent Term Adjustment; USPTO Proposed Rule Changes

In an August 16, 2012 Federal Register Notice, the USPTO announced final rules that change the way that Patent Term Adjustment (PTA) will be calculated after a Notice of Appeal has been filed. The final rules generally follow the rules that were proposed in December of 2011 and treat “appellate review” for PTA purposes as commencing when jurisdiction over a patent application passes to the Board. According to the Federal Register Notice, new PTA deductions will apply to patent applications in which a Notice of Appeal is filed on or after September 17, 2012, and the new PTA calculations will be applied to patent applications in which a Notice of Allowance is issued on or after September 17, 2012.  Other patentees may be able to benefit from the rule changes if they can file timely requests for reconsideration of the PTA awarded to their patents under the current rules. Continue reading this entry

First To File Practice: Grace Period Shielding Disclosures

Posted in Patent Reform; USPTO Proposed Rule Changes

This is the third article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art, and the proposed requirements for invoking the “grace period non-inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what I refer to as the “grace period shielding disclosure” exception to prior art.Continue reading this entry

An Overview Of The Final Patent Reform Rules Packages Effective September 16, 2012

Posted in Patent Reform; USPTO Proposed Rule Changes

On August 14, 2012, the USPTO published the final rule packages for implementing the patent reform changes that take effect September 16, 2012. Several colleagues and I prepared Legal News Alert articles which provide an overview of key changes embodied in the rules.

This article looks at some of the key provisions relating to an assignee’s ability to file and prosecute patent applications, changes to the inventor oath/declaration requirements, changes to reissue application practice, simplified procedures for correcting inventorship, the heightened importance of application data sheets, and the elimination of “without deceptive intent” requirements.

This article looks at the new rules for the new supplemental examination proceedings and pre-issuance submissions by third parties.

This article looks at the four rules packages which implement the new trial proceedings that will be conducted by the Patent Trial and Appeal Board (Board), including inter partes review, post-grant review, and the transitional program for covered business method patents.

Learning More About The Final Rules

We will be providing more in-depth reviews of the final rules packages on PharmaPatentsBlog over the next few weeks. In addition, as noted above, the USPTO is holding several AIA roadshows across the country in September, where USPTO representatives will explain the new rules.

Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012.  This program will give attendees an opportunity to understand how interference and inter partes examination have influenced the new proceedings, to discuss how these new options may impact business strategies, and to learn proactive steps that can be taken now to prepare for the changes to come.  Scheduled featured guest speakers include Teresa Stanek Rea, Deputy Under Secretary of Commerce for IP and Deputy Director of the USPTO and James D. Smith, Chief Administrative Patent Judge, USPTO. Featured speakers from Foley & Lardner LLP include Matthew A. Smith, Partner and Chair, Patent Office Trials Practice, and Andrew S. Baluch, Special Counsel and Vice Chair, Patent Office Trials Practice.

USPTO Issues Final Rules For America Invents Act Provisions That Take Effect September 16, 2012

Posted in Patent Reform; Uncategorized; USPTO Proposed Rule Changes

As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet reviewed all of the final rules, it appears that the USPTO took public comments into consideration and made significant changes to some of the proposed rules. Applicants and practitioners should study the final rules packages and consider attending a USPTO “AIA roadshow,” where USPTO representatives will explain the new rules. Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012.   Continue reading this entry

First To File Practice: Grace Period Non-Inventor Disclosures

Posted in Patent Reform; USPTO Proposed Rule Changes

This is the second article in my First-To-File Friday series. On each Friday in August, I am publishing an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules, the proposed examination guidelines, and the proposed requirements for invoking the “grace period inventor disclosure” exception to prior art. Here, I look at the proposed requirements for invoking what the USPTO refers to as the “grace period non-inventor disclosure” exception to prior art. Continue reading this entry

USPTO Reverses Course to Permit Anonymous Ex Parte Reexamination Requests

Posted in Patent Reform; Reexam; USPTO Proposed Rule Changes

Responding to public feedback, the USPTO announced that it has dropped a controversial proposal that would have required all requests for ex parte reexamination to identify the requester’s “real party in interest.”  The change is one of several new provisions in a Final Rule, released August 6, 2012, which implements a new estoppel provision in the America Invents Act (AIA) barring ex parte reexamination of a patent following the completion of an inter partes review or post-grant review.  Third-party requesters and patent owners alike will need to be familiar with the Final Rule which goes into effect on September 16, 2012.  Continue reading this entry

First To File Practice: Grace Period Inventor Disclosures

Posted in Patent Reform; USPTO Proposed Rule Changes

This is the first article in my First-To-File Friday series. On each Friday in August, I will publish an article that takes an in-depth look at one of the prior art exceptions of the first-to-file version of 35 USC § 102 which will apply to certain patent applications filed on or after March 16, 2013.

The USPTO has issued its proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA), and will consider written comments received by October 5, 2012. In previous articles I have provided overviews of the proposed rules and the proposed examination guidelines. Here, I turn my attention to the specific requirements (as proposed) for invoking the “grace period inventor disclosure” exception to prior art. Continue reading this entry

USPTO Issues Proposed First-To-File Rules And Guidelines

Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

The July 26, 2012 Federal Register published the USPTO’s proposed rules and proposed examination guidelines for implementing the first-to-file provisions of the America Invents Act (AIA). I provided an initial overview of the proposed rules last week, and now turn my attention to the proposed examination guidelines. The USPTO will consider written comments on the proposed rules and guidelines received by October 5, 2012. Continue reading this entry

A Sneak Peek At The USPTO’s Proposed First-To-File Rules

Posted in Patent Reform; USPTO Proposed Rule Changes

For a short time on Friday, July 20, 2012, the USPTO’s proposed rules to implement the first-to-file provisions of the America Invents Act (“AIA”) were available in the Federal Register’s “electronic Reading Room.” According to the USPTO’s AIA Implementation website, the USPTO temporarily withdrew the proposed rules in order “to enable the Federal Register to publish the first-inventor-to-file rulemaking at the same time as the first-inventor-to-file guidance document” that the USPTO plans to issue. Because this explanation suggests that the USPTO does not intend to change the substance of the proposed rules, I will proceed with my review and analysis of the proposed rules as pre-published.Continue reading this entry

USPTO Publishes Final Rules For Preissuance Submissions By Third Parties

Posted in Patent Reform; USPTO Proposed Rule Changes

The USPTO published the final rules to implement the Preissuance Submissions provisions of the America Invents Act in the July 17, 2012 Federal Register. The final rules add new 37 CFR § 1.290, revise 37 CFR § 1.291, and remove 37 CFR § 1.99 (the current rule relating to preissuance submissions) and 37 CFR § 1.292 (the current rule relating to public use proceedings). The rules take effect on September 16, 2012, and are applicable in principle to all pending patent applications. The final rules are similar to the proposed rules that were published in January, but there are some important differences and clarifications set forth in the final rulemaking.Continue reading this entry

USPTO Publishes Proposed Micro Entity Rules

Posted in Patent Office Practice; Patent Reform; USPTO Proposed Rule Changes

Federal Register Notice set to publish on May 30, 2012, sets forth the USPTO’s proposed rules for implementing the Micro Entity provisions of the America Invents Act (“AIA”). The proposed rules closely track the new law, but the USPTO seeks input on one important issue of statutory interpretation. Public comments on the proposed rules should be submitted by July 30, 2012.Continue reading this entry

USPTO Announces QPIDS Pilot Program For Post-Issue Fee Information Disclosure Statements

Posted in Duty of Disclosure; Patent Office Practice; USPTO Proposed Rule Changes

The USPTO has announced a new pilot program to permit Applicants to obtain consideration of certain Information Disclosure Statements (IDSs) after the Issue Fee has been paid without having to reopen prosecution. The “Quick Path Information Disclosure Statement (QPIDS) Pilot Program” takes effect May 16, 2012 and will run through September 30, 2012 unless it is extended. 

Continue reading this entry