USPTO Publishes Final Rules for the Citation of Prior Art and Written Statements Provision of the America Invents Act

The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) has published final rules in the Federal Register to implement the Citation of Prior Art and Written Statements provision of the Leahy-Smith America Invents Act (AIA).

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. The citation of prior art and written statements provision of the AIA becomes effective on September 16, 2012. Release of this final rule follows a public comment period on the proposed rule earlier this year.

“The citation of prior art and written statements provision of the America Invents Act ensures that any statements a patent owner makes about the scope of the patent claim will be known to the courts as well as to the Office,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “We’re pleased to have them posted in the Federal Register well before the effective date.”

The USPTO plans to discuss the final rules for citing prior art and written statements at “roadshows” scheduled for September 2012 in Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York.

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