USPTO Publishes Proposed Rules and Examination Guidelines to Implement the First-inventor-to-file System of the AIA | Practical Law

USPTO Publishes Proposed Rules and Examination Guidelines to Implement the First-inventor-to-file System of the AIA | Practical Law

The US Patent and Trademark Office (USPTO) has proposed changes to its patent application rules of practice and new examination guidelines to implement the first-inventor-to-file provisions of the Leahy-Smith America Invents Act (AIA). It also has proposed to eliminate its rules concerning statutory invention registrations.

USPTO Publishes Proposed Rules and Examination Guidelines to Implement the First-inventor-to-file System of the AIA

by PLC Intellectual Property & Technology
Published on 25 Jul 2012 • USA (National/Federal)
The US Patent and Trademark Office (USPTO) has proposed changes to its patent application rules of practice and new examination guidelines to implement the first-inventor-to-file provisions of the Leahy-Smith America Invents Act (AIA). It also has proposed to eliminate its rules concerning statutory invention registrations.
On July 25, 2012, the USPTO filed a:
  • rulemaking to propose changes for implementing the first-inventor-to-file system of the America Invents Act (AIA) and eliminating the USPTO's statutory invention registration rules.
  • Request for comments on proposed examination guidelines for implementing the AIA's first-inventor-to-file provisions.
The proposed rules and guidelines were published in the Federal Register on July 26, 2012. Comments on both will be accepted through October 5, 2012.

Proposed Rules

Specifically, the proposed rules would:
  • Add certain AIA definitions to the patent rules of practice.
  • Address affidavit and declaration practice for attribution, prior disclosure and derivation by allowing the applicant to submit affidavits or declarations showing that a disclosure on which a claim rejection was based was made by:
    • the inventor;
    • a joint inventor; or
    • another party who obtained the disclosed subject matter from the inventor or a joint inventor.
  • Require the applicant to file a certified copy of any foreign priority application by the date that is the later of:
    • four months from the US application filing date; or
    • 16 months from the foreign priority application filing date.
  • Add certain requirements for nonprovisional applications filed on or after March 16, 2013 that claim priority to the filing date of an application filed before March 16, 2013, to enable the USPTO to readily determine whether an application is subject to the AIA's changes to Sections 102 and 103 of the Patent Act.
  • Eliminate the USPTO rules concerning statutory invention registrations.

Non-provisional Application Requirements

The proposed rules would require that for nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a foreign, provisional or nonprovisional application filed before March 13, 2013:
  • If the later nonprovisional application at any time contains a claim to a claimed invention having an effective filing date on or after March 16, 2013, the applicant must provide a statement disclosing that fact by the date that is the latest of:
    • four months from the actual filing date of the later-filed application or the national stage entry date of an international application;
    • 16 months from the filing date of the earlier-filed application; or
    • the date that a claim to a claimed invention that has an effective filing date on or after March 16, 2013 is first presented in the application.
  • If the later nonprovisional application does not contain a claim to a claimed invention having an effective filing date on or after March 16, 2013, but discloses subject matter that is not also disclosed in the earlier-filed foreign, provisional or nonprovisional application, the applicant must provide a statement that the application includes matter not disclosed in the earlier-filed application by the date that is the later of:
    • four months from the actual filing date of the later-filed application or the national stage entry date of an international application; or
    • 16 months from the filing date of the earlier-filed application.

Proposed Guidelines

The proposed guidelines:
  • Set out the USPTO's interpretation of Sections 102 and 103 of the Patent Act as amended by the AIA.
  • Advise the public and the Patent Examining Corps on how the AIA's changes to these sections impact the corresponding provisions of the Manual of Patent Examining Procedure.
For more information on the first-inventor-to-file system of the AIA, see Practice Note, Leahy-Smith America Invents Act: Overview: First-inventor-to-file Patent System.