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USPTO Publishes Final Rules On First-Inventor-to-File.

Posted in Practice Commentary by Jake Ward on February 13, 2013

Press release 13-10 from the U.S. Patent and Trademark Office.

 USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File

Actions Complete Implementation of America Invents Act Rules

Washington— The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA).  The provision, one of the hallmarks of the AIA, is a major step towards harmonization of the U.S. patent system with those of the United States’ major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file system. The first-inventor-to-file provision of the AIA goes into effect on March 16, 2013, and represents the final implementation of the changes mandated by the AIA.

The USPTO also today published final examination guidelines setting forth the agency’s interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application.  In particular, the agency’s final examination guidelines inform the public and patent examiners how the AIA’s changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates.

“Migration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.
Prior to the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent” system. First-inventor-to-file complements USPTO’s existing efforts toward greater harmonization with foreign counterparts. One result of these efforts is the Cooperative Patent Classification system launched on January 1st of this year, a common classification system that will enhance the examination capabilities of both the USPTO and the European Patent Office. Another such effort is USPTO’s ongoing coordination with the world’s largest patent offices–the so-called Tegernsee Group dialogues. The USPTO currently is seeking comment on these initiatives.

The AIA authorizes derivation proceedings before the USPTO, which will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent.  The AIA also creates a one-year grace period, which will ensure that the patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures. The new micro-entity (75%) discounts for patent applicants also make it more affordable than ever for independent inventors to seek patents.
The USPTO will provide more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be held on Friday March 8, 2013 at the USPTO’s headquarters in Alexandria, Virginia.  The training session will be webcast.  Details on webcast access will be available on the AIA micro-site at www.uspto.gov/AmericaInventsAct.

The Federal Register publication – Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act – can be found at http://federalregister.gov/a/2013-03453 and the Federal Register publication – Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines – can be found at http://federalregister.gov/a/2013-03450.

The public may contact the AIA Helpline at 1-855-HELP-AIA (1-855-435-7242) or the AIA Email at HELPAIA@uspto.gov for answers to first-inventor-to-file and other AIA related questions.

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