IP Update, Vol. 10, No. 3 (7 August 2012)

Editors: Marc S. Weiner, Esq. and Nicholas P. Godici

The PTO Publishes Final Rules Implementing AIA Provisions Including Preissuance Submissions by Third Parties and Submission of Patent Owner Statements in Patent Files

The USPTO has recently published final rule packages that implement two provisions of the Leahy-Smith America Invents Act of 2011 (“ the AIA”) that are scheduled to go into effect on September 16, 2012.

Final rules implementing preissuance submissions by third parties of prior art were published on July 17, 2012. Under this provision of the AIA third parties may submit patents and printed publications to the PTO prior to the issuance of a patent for consideration during the examination of a patent application. This new provision of the law expands the window of opportunity in which a third party may submit prior art patents and printed publication to the PTO in a pending application and provides that the third party submissions be accompanied by a concise description of the relevance of each document submitted.  Documents submitted by third parties that are in compliance with new rule 37 CFR 1.290 will be reviewed and considered by the examiner during the examination process. This provision of the AIA applies to any patent application filed before, on, or after September 16, 2012.

In a final rule published on August 6, 2012 the PTO announced procedures for implementing AIA provisions that expand the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the PTO regarding the scope of a claim of the patent. Prior to implementation of this provision of the AIA submissions in patent files were limited to patents and printed publications. New rule 37 CFR 1.501(a) (2) permits any person to submit patent owner statements in which the patent owner took a position on the scope of the claims of the patent in documents filed in a Federal court proceeding or a proceeding before the PTO.  The new rules explain how such patent owner statements may be considered in ex parte reexamination, inter partes review, and post grant review proceedings before the PTO.

Additionally, the PTO has announced that final rules implementing the remaining AIA provisions that go into effect on September 16, 2012 will be published on August 14, 2012 specifically, (i) inventor’s oath/declaration; (ii) supplemental examination; (iii) post grant review; and (v) covered business method review.

Summary provided by Nicholas P. Godici