Historic Patent Reform Law Goes into Effect September 16, 2012

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.  35 U.S.C. 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application with a concise description of the asserted relevance of each document submitted. Under 35 U.S.C. 122(e), such submissions must be made (1) before the later of (i) 6 months after the date the application is first published by the Office, or (ii) the date of a first Office action on the merits rejecting any claim, and (2) before the date a notice of allowance is given or mailed. Section 122(e) also provides for such fees as the Director may prescribe. This new provision is effective September 16, 2012, and applies to any patent application filed before, on, or after September 16, 2012.

• 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 supplemental examination provision permits a patent owner to present information believed to be relevant to the patent for the Office to consider, reconsider, or correct. A patent owner may use supplemental examination to forestall a subsequent inequitable conduct challenge to the enforceability of the patent during litigation.

• The inventors oath and declaration provision that for the first time allows assignee filing of a patent application. The inventor’s oath or declaration provision permits a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make an application for patent. The inventor’s oath or declaration final rules also streamline the statements required for an inventor’s oath/declaration, and permit a substitute statement in lieu of an oath/declaration in certain circumstances. Lastly, the inventor’s oath or declaration final rules allow applicants to postpone filing the oath/declaration until the application is otherwise in condition for allowance and to provide for assignments containing oath or declaration statements.

• 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. This AIA provision expands the type of information that a patent owner or third party may submit into a patent file. It will allow submission of patent owner statements about claim scope that were made in a federal court or a USPTO proceeding. The provision also defines how the Office may use such information during ex parte reexamination, inter partes reexamination, and post grant review.

“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.

Also See:

Strong Growth in Demand for Intellectual Property Rights in 2012 – WIPO

USPTO Updates Professional Conduct Rules and Registration Examination for Patent Attorneys

Expanded SHIELD Act Filed to Combat Patent Trolls

USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File

USPTO Seeking Comments on Matters Related to the Harmonization of Substantive Patent Law