[author: Courtenay C. Brinckerhoff]

As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet reviewed all of the final rules, it appears that the USPTO took public comments into consideration and made significant changes to some of the proposed rules. Applicants and practitioners should study the final rules packages and consider attending a USPTO “AIA roadshow,” where USPTO representatives will explain the new rules. Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012.

Patent Trial Rules

As of September 16, 2012, inter partes review will replace inter partes reexamination, and certain covered business method patents will be subject to post grant review. Additionally, the Board of Patent Appeals and Interferences will become the Patent Trial and Appeals Board. The August 14, 2012 Federal Register includes four rules packages relating to these changes. As described by the USPTO :

  1. The first notice sets forth general procedures common to the three different types of administrative trials, such as for evidentiary standards, discovery standards, sanctions for abuse of discovery, and motions to seal and protective orders.
  2. The second notice sets forth specifics for the three different trial proceedings, including: (1) the requirements for a petition to institute the particular type of review; (2) the standards for showing sufficient grounds to institute the particular review; (3) the standards for instituting the particular review; (4) the procedures for conducting the particular review that permits a patent owner response, a submission of written comments, and an oral hearing; (5) the standards and procedures for discovery and for the patent owner to move to amend the patent; and (6) the time periods for completing the review.
  3. The third notice sets forth definitions for the terms “covered business method patent” and “technological invention” that the Board will use in conducting transitional covered business method patent review proceedings.
  4. The [fourth] notice presents a practice guide for the administrative trial final rules to advise the public on the general framework of the regulations, including the structure and times for taking action in each of the new proceedings.

Supplemental Examination

As of September 16, 2012, patent owners can seek supplemental examination of their patents to have the USPTO consider, reconsider, or correct information believed to be relevant to the patent, and possibly shield the patent from inequitable conduct charges. The rules governing this new type of proceeding are set forth in a single rules package.

Changes to Inventor Oath/Declaration Requirements

On September 16, 2012, provisions of the AIA permitting filing and prosecution of U.S. patent applications by the Assignee and changing the inventor oath/declaration requirements take effect for U.S. patent applications filed on or after September 16, 2012. The rules implementing these and other prosecution-related changes are set forth in a single rules package.

USPTO Responds to Public Comments

In each of the final rules packages, the USPTO responds to the written public comments received with reference to the proposed rules. These portions of the rules packages include important information, and shed further light on the USPTO’s interpretation of the AIA and intended meaning of the rules. In skimming the rules packages, I noticed that the USPTO has made several significant changes to the final rules in direct response to written public comments, including changing the page limits for inter partes review and post-grant review submissions, softening the patentee estoppel provisions that may attach to a patent trial proceeding, permitting Assignees to file and prosecute patent applications under any circumstances (e.g., not only when the inventor cannot be located or refuses to cooperate), and permitting filing of the inventor oath/declaration up until a time period set in a Notice of Allowability.

Learning More About the Final Rules

We will be providing more in-depth reviews of the final rules packages on PharmaPatentsBlog over the next few weeks. In addition, as noted above, the USPTO is holding several AIA roadshows across the country in September, where USPTO representatives will explain the new rules.

Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012. This program will give attendees an opportunity to understand how interference and inter partes examination have influenced the new proceedings, to discuss how these new options may impact business strategies, and to learn proactive steps that can be taken now to prepare for the changes to come. Scheduled featured guest speakers include Teresa Stanek Rea, Deputy Under Secretary of Commerce for IP and Deputy Director of the USPTO and James D. Smith, Chief Administrative Patent Judge, USPTO. Featured speakers from Foley & Lardner LLP include Matthew A. Smith, Partner and Chair, Patent Office Trials Practice, and Andrew S. Baluch, Special Counsel and Vice Chair, Patent Office Trials Practice.

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