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The America Invents Act Celebrates Its One-Year Anniversary on September 16, 2012: Several New Provisions of Law Take Effect on That Day and the USPTO Holds Cross-Country Roadshows

September 2012 is an exciting and dynamic month for the America Invents Act. Several new provisions of law and U.S. Patent and Trademark Office (USPTO) rules implementing those provisions become effective on September 16, 2012, the one-year anniversary of the AIA. The USPTO is hosting a series of roadshows that will visit seven cities nationwide throughout the month to discuss these new provisions and rules.

More specifically, four provisions implicated in the patent examination process and four provisions relevant to issued patents become effective September 16. Beginning with the latter, the inventor’s oath or declaration, pre-issuance submission, and citation of patent owner claim scope statements provisions take effect. Turning to the former, supplemental examination, inter partes review, post-grant review, and the transitional program for covered business methods also take effect. Here is a quick summary of each provision:

  • Inventor’s Oath/Declaration—Simplifies the information that must be included in an inventor’s oath or declaration, and permits that information to be filed as part of an assignment to reduce the number of documents submitted to the USPTO. The AIA also extends the time to file an inventor’s oath or declaration until the invention is found to be patentable.
  • Pre-issuance Submission—Permits a third party to file printed publications of relevance to the invention claimed in another’s patent application, provided the third party explains the relevance of the documents to the examiner. Third-party submissions will help to build the record before the examiner and thereby facilitate patentability determinations.
  • Citation of Patent Owner Claim Scope Statements—Permits a patent owner or third party to include statements in a patent file about the scope of the patent claims that the patent owner made in a federal court or USPTO proceeding. With these statements of record, the USPTO will understand how a patent owner views its claimed invention in the same light as the federal courts.
  • Supplemental Examination—Enables a patent owner to secure a supplemental examination of a patent for the USPTO to consider, reconsider, or correct information of potential relevance to the patentability of the claimed invention. Following a supplemental examination, the patent will be immunized from allegations of inequitable conduct based on the submitted information.
  • Inter Partes Review—Allows a third party to challenge the patentability of a claimed invention in a issued patent for lack of novelty or obviousness premised on patents or printed publications from 10 months after patent grant for the life of the patent. An inter partes reviews offers a third party an alternative to district court litigation for challenging a patent.
  • Post-grant Review—Allows a third party to challenge the patentability of a claimed invention in an issued patent on any of the grounds for patentability (except best mode) for the first nine months after patent grant. Similar to inter partes review, a post-grant review presents a second alternative to district court litigation for challenging patent validity.
  • Transitional Program for Covered Business Methods—Creates a special type of post-grant review targeted on "covered business methods." The AIA gives a definition for a "covered business method" and offers this transitional review for a period of eight years.

More detailed information about each of these provisions, along with the final rules implementing them, may be found on the AIA micro-site at www.uspto.gov/AmericaInventsAct. The micro-site also features frequently asked questions concerning these provisions.

To offer additional education about the AIA provisions and implementing final rules that become effective on September 16, 2012, the USPTO is traveling to Atlanta, Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York City for full-day roadshows. Representatives from the Patents Business Unit and administrative patent judges from the Board of Patent Appeals and Interferences will be in attendance, along with Deputy Director Teresa Stanek Rea and Chief of Staff Peter Pappas. Specific dates, venue locations, and an agenda are available on the micro-site at http://www.uspto.gov/aia_implementation/roadshow.jsp.

As summer winds down, the AIA kicks into high gear when eight new provisions of law become effective, and the USPTO hits the road to teach you about those provisions and implementing rules. Don’t miss the opportunity to stay abreast of these changes by attending an AIA roadshow in a city near you!

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