Enter to open, tab to navigate, enter to select
USPTO Publishes Final AIA First-inventor-to-file Rule and Examination Guidelines
Practical Law Legal Update 9-524-1561 (Approx. 4 pages)
USPTO Publishes Final AIA First-inventor-to-file Rule and Examination Guidelines
by PLC Intellectual Property & Technology
| Published on 14 Feb 2013 • USA (National/Federal) |
The US Patent and Trademark Office (USPTO) has published in the Federal Register its final rule and examination guidelines implementing the first-inventor-to-file provisions of the Leahy-Smith America Invents Act (AIA).
On February 14, 2013, following public comment on earlier proposed rules and guidelines (see Legal Update, USPTO Publishes Proposed Rules and Examination Guidelines to Implement the First-inventor-to-file System of the AIA), the USPTO published in the Federal Register its final rules (see Final Rules) and final patent examination guidelines (see Final Examination Guidelines) implementing the Leahy-Smith America Invents Act (AIA) first-inventor-to-file provisions. Both the final rule and guidelines are effective March 16, 2013.
The USPTO is hosting a public forum to discuss the first-inventor-to-file final rules and guidance on Friday, March 8, 2013 from 10:00 am to 12:30 pm EDT on the USPTO's Alexandria campus, which will be webcast on the AIA micro-site.
Publication of the final rule concludes the USPTO's rulemaking for AIA provisions that become effective in March 2013 and the USPTO's rulemaking for the AIA (for more on the USPTO's rulemaking, see Practice Note, Road Map to USPTO Leahy-Smith America Invents Act Implementing Rules).
Final Rules
The key provisions of the USPTO's final rules:
- Add certain AIA definitions to the patent rules of practice.
- Address affidavit practice for attribution, prior disclosure and derivation.
- Require an 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, to enable the USPTO to readily determine whether an application is subject to the AIA's changes to Section 102 and 103 of the Patent Act.
- Eliminate the USPTO rules concerning statutory invention registration.
In response to public comments, the USPTO made several changes to its earlier proposed rules, including changes to:
- The time period for filing a certified copy of a foreign priority application. In response to public comments stating that the USPTO should consider alternative means of ensuring that a copy of any priority application is available, the USPTO is requiring in the final rule that the requirement 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 does not apply if either:
- the foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement (participating foreign intellectual property office); or
- a copy of the foreign application was filed in an application subsequently filed in a participating foreign intellectual property office that permits the USPTO to obtain such a copy, and the applicant timely requests in a separate document that the USPTO retrieve such copy from the participating intellectual property office.
- Statements required for nonprovisional applications claiming priority to or the benefit of an application filed before March 16, 2013. In the final rule, the USPTO provides that a statement is only required if a transition application contains (or contained at any time) a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
- Affidavits or declarations showing a prior disclosure by an inventor or another who obtained the subject matter from an inventor. The provision in the final rule does not set out the standard for a successful affidavit or declaration and does not require an applicant to file a petition for a derivation proceeding. It simply specifies:
- when an affidavit or declaration of attribution or prior public disclosure may be used to disqualify a disclosure as prior art; and
- the procedural requirements for the affidavit or declaration.
The final rule also clarifies that for the prior public disclosure exception provisions, there is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure.
Final Examination 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.
The final guidelines also clarify in response to public comments on the proposed guidelines that:
- There is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure.
- There is no requirement that the disclosure by the inventor or a joint inventor be a verbatim disclosure of an intervening disclosure for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.
- The exception based on a previous public disclosure applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor.
For more information on the first-inventor-to-file provisions of the AIA, see Practice Note, Leahy-Smith America Invents Act: Overview.