#InventChat Recap: AIA New Rules with the USPTO

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

What kind of oath/declaration should an applicant file for a Request for Continued Examination (RCE)?
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?
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.

How will FITF help independent inventors?
FITF system is simpler & more objective for acquiring patent & determining entitlement to patent as between 2 or more inventors.

For answers to all AIA questions, call 1-855-HELP-AIA; email: HELPAIA@uspto.gov; or visit http://t.co/qFCqwdtw.

1 Comment #InventChat Recap: AIA New Rules with the USPTO

  1. Thomas Flansburg

    This is a great recap and most of it is greek to me at this point. One thing that stands out is the supplemental examination provision and the fees associated with it.” A patent owner must pay 1) $5140 filing fee; 2) $16,120 reexam fee” so if i understand correctly.. the fees are prohibitively high so that if a patent is denied an individual cannot change the submission or challenge the denial without significant investment. This makes the accuracy and completeness of the initial filing crucial in this process. I know that from a manufacturer’s standpoint the whole process can be too expensive and time consuming to pursue.

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