USPTO Issues Final Rules for the Prior Art and Written Statement Provisions of the AIA | Practical Law

USPTO Issues Final Rules for the Prior Art and Written Statement Provisions of the AIA | Practical Law

On August 6, 2012, the US Patent and Trademark Office (USPTO) issued final rules to implement miscellaneous post-patent provisions of the Leahy-Smith America Invents Act, including the prior art citation and written statement provisions.

USPTO Issues Final Rules for the Prior Art and Written Statement Provisions of the AIA

by PLC Intellectual Property & Technology
Published on 06 Aug 2012 • USA (National/Federal)
On August 6, 2012, the US Patent and Trademark Office (USPTO) issued final rules to implement miscellaneous post-patent provisions of the Leahy-Smith America Invents Act, including the prior art citation and written statement provisions.
On August 6, 2012, the USPTO published final rules to change Sections 1.501, 1.510, 1.515 and 1.552 of Title 37 of the Code of Federal Regulations to implement miscellaneous post-patent provisions of the America Invents Act (AIA). The final rules primarily:
  • Expand the scope of information that a person may cite in the file of a patent to include a patent owner's written statements that were filed in a federal court or USPTO proceeding in which the patent owner took a position on the scope of any claim of the patent. This rule is intended to limit a patent owner's ability to put forward different positions in different proceedings on the same patent.
  • Implement certain provisions of Section 6 that prohibit the filing of an ex parte reexamination request after a final written decision in a post-grant review or inter partes review proceeding.
Under the final rules:
  • The ex parte reexamination rules are revised to require that a third-party request for ex parte reexamination contain a certification by the third-party requester that the statutory estoppel provisions of inter partes review and post-grant review do not bar the third party from requesting ex parte reexamination.
  • Submission of a patent owner's written statements under Section 1.501(a) must:
    • identify the forum and proceeding in which the patent owner filed each statement and the specific papers and portions of the papers submitted that contain the statements;
    • explain how each statement is a statement in which the patent owner took a position on the scope of any claim in the patent;
    • explain the pertinency and manner of applying the statement to at least one patent claim; and
    • reflect that a copy of the submission has been served on the patent owner, if submitted by a party other than the patent owner.
The final rules also revise the nomenclature in the rules of practice for consistency with the changes in Sections 3(i), 3(j), 4(c) and 7 of the AIA:
The USPTO first published a notice proposing to change the rules of practice to implement these post-patent provisions of the AIA on January 5, 2012 (see Legal Update, USPTO Proposes Changes to its Rules of Practice to Implement Certain Post-Patent Provisions of the AIA). Following a comment period, the USPTO made the following changes to the proposed rules:
  • The scope of what may be submitted under Section 1.501(a) has been expanded to include written statements made outside of a federal court or USPTO proceeding and later filed for inclusion in a federal court or USPTO proceeding.
  • The proposal in Section 1.501(e) to require proof of a bona fide attempt of service was not implemented.
  • Under Section 1.510(a), the scope of the AIA estoppel provisions is interpreted to prohibit only the filing of a later request for ex parte reexamination.
  • Under Section 1.510(b)(6), the final rule does not require an ex parte reexamination requester to identify himself upon the filing of the request.
The final rules include the public comments to the January 5, 2012 notice, as well as the USPTO's responses to those comments. The changes in these final rules become effective September 16, 2012.