If you couldn’t join us for our November 6 tweet chat featuring the USPTO to discuss new provisions to the America Invents Act (AIA), below is a recap of what you missed. USPTO Patent Reform Coordinator, Janet Gongola, divided the chat into four key topic areas (Inventor?s Oath/Declaration; Preissuance Submission; Supplemental Examination; and First-Inventor-to-File), while taking participant questions between each topic.
Topic #1: Inventor’s Oath/Declaration
- The inventor?s oath/declaration provision of AIA took effect on 9/16/12.
- AIA compliant oath/declaration is required in applications (e.g. non-provisional, continuation, and divisional) filed on/after 9/16/12.
- The AIA compliant oath/declaration is not required for PCT apps entering national stage after 9/16/12 if the PCT app filed before 9/16/12.
- Assignee, obligated assignee, & person w/sufficient interest in invention can file app after 9/16/12, but must name inventors.
- Inventors can be named in an application in one of three ways:? 1) oath/declaration 2) combo assignment/oath/declaration 3) a substitute statement.
- An inventor must make 2 statements in oath/declaration: he/she (1) is an original inventor (2) has authorized the application to be filed.
- An inventor no longer must state in the oath/declaration: (1) his/her country of citizenship (2) that he/she is the first inventor.
- Filing inventor oath/declaration can be delayed until Notice of Allowability if? the application data sheet (ADS) is filed w/application naming all inventors
- ?Inventor oath/declaration & substitute statement forms can be found at http://t.co/Dm1LuCTp
Question: What kind of oath/declaration should an applicant file for a Request for Continued Examination (RCE)?
Answer: An RCE filed after 9/16/12 from a ?parent? filed before 9/16/12 needs an AIA compliant oath/declaration only if there is a change to the inventorship.
Question:? What about assignments? Can the assignment from a patent case still be recorded in a child application?
Answer: An assignment only from a parent can be recorded for the child, but a combo assignment-oath/declaration cannot if parent filed before 9/16/12 and child filed after 9/16/12.
Topic #2: Preissuance Submissions
- Preissuance submission provision of AIA was effective 9/16/12.
- Third party (3P) may submit printed publications e.g., U.S. or foreign patent, journal article, in another?s patent application.
- Purpose of preissuance submission is to place the most relevant art in record so examiner can decide patentability efficiently.
- Third party can make preissuance submission in pending or abandoned non-provisional utility, design, or plant applications.
- Third Party must meet 4 conditions for preissuance submission: 1) timeliness 2) concise description of relevance 3) fee 4) statements.
- Preissuance submission possible before Notice of Allowance and before later of: first rejection or 6 months after app publishes.
- Concise description of relevancy = where & how publication bears upon patentability of claimed invention, e.g., pages, figures.
- A third party must pay $180 to submit ? 10 docs in preissuance submission.
- A third party may submit ? 3 documents free on a one-time basis in a preissuance submission.
- Preissuance submission info can be found at http://t.co/gum8KDq5
Topic #3: Supplemental Examination
- The supplemental examination provision of AIA became effective 9/16/12.
- Supplemental exam is available for any enforceable patent on or after 9/16/12.
- A patent owner can request that the USPTO consider, reconsider, or correct an item of info relevant to patent.
- If any item of info raises a substantial new question of patentability, the USPTO will order an ex parte reexam.
- A patent owner must pay 1) $5140 filing fee; 2) $16,120 reexam fee (refunded if reexam not ordered).
- Supplemental exam request may address any condition of patentability. A supplemental examination can address best mode.
- The full details on supplementary exam: http://t.co/X6e3DdFM
- Supplemental examination frequently asked questions can be found at http://t.co/SiXCKs1J
Topic #4: First-inventor-to-file
- First-inventor-to-file (FITF) provision effective 3/16/13.
- FITF system makes U.S. more consistent with practices of economic competitors & moves toward global harmonization of patent law.
- FITF system awards priority of invention to the first inventor to file patent application with the USPTO.
- FITF system maintains a 1-year grace period; inventor can disclose invention up to one year before filing patent.
- FITF system treats public use or sale anywhere in the world (not just U.S.) as constituting prior art.
Question: How will FITF help independent inventors?
Answer: FITF system is simpler & more objective for acquiring patent & determining entitlement to patent as between 2 or more inventors.