The U.S. Patent and Trademark Office (USPTO) recently released the final rules relating to implementation of the following provisions of the America Invents Act (AIA) that will go into effect on September 16, 2012:
Applicant and Inventor Declaration Changes
The final rules change many aspects of the prior rules relating to who can be listed as the applicant in a patent application and to the content and timing of filing declarations. Thus, for applications having a filing date on or after September 16, 2012, patent applicants can expect to see very different declarations provided for signature. For more details regarding these rule changes, please click here.
Supplemental Examination
The supplemental examination procedure provides patent holders the opportunity to have the USPTO consider, reconsider, or correct information believed to be relevant to the patent. If the USPTO determines that there is a substantial question regarding patentability in light of the information presented, it orders an official ex parte reexamination. If not, the USPTO closes the matter and issues a supplemental examination certificate. A key benefit available under supplemental examination is to prevent others from using the information presented as a basis for a charge of inequitable conduct. The government cost to file the supplemental examination is $21,260 (however, $16,120 of the cost will be refunded if the USPTO decides not to order ex parte reexamination). For more details regarding the final rules and strategic considerations related to the supplemental examination procedure, please click here.
Post-Issuance Inter Partes Disputes
The AIA provides for new trial proceedings to be conducted by the USPTO that offer third parties new opportunities to challenge issued patents. The trial proceedings include Inter Partes Review (IPR) proceedings, Post-Grant Review (PGR) proceedings, Covered Business Method (CBM) patent review proceedings, and derivation proceedings. The IPR rules apply to all patents, regardless of priority date. The CBM review rules apply to all CBM patents, regardless of priority date. The PGR rules primarily apply to patents that have a priority date after March 15, 2013. The final rules for derivation proceedings will be issued at a later date because derivation proceedings will not go into effect until March 16, 2013. The attorneys of the Knobbe Martens USPTO Trials and Post-Grant Proceedings practice group has extensive experience in USPTO adversarial proceedings and can provide in-depth insight and analysis on the new trial proceedings. For more details regarding the final rules and strategic considerations related to USPTO post-issuance inter partes disputes, please click here.
Third-Party Prior Art Submissions
In addition to setting forth the procedures for submission of prior art against someone else’s patent application, the final rules regarding third party prior art submissions eliminate pre-grant public use proceedings and slightly modify the protest procedure currently available to challenge pending applications. Under the new procedure, third parties will be able to submit patents, published patent applications or other publications for consideration against a pending patent application (including prior art references already of record) along with a concise description of the relevance of each prior art reference. The fee is $180 for every ten prior art references submitted. For more details regarding the final rules and strategic considerations related to third party art submissions, please click here.
Conclusion
The provisions of the AIA addressed above may result in significant modifications to strategies related to protection and enforcement of your own patents, as well as strategies for challenging your competitors’ patents. It will be important for you and your business to understand the nature of these changes so that you can be prepared for their impact on the patent landscape and in the competitive marketplace.
If you would like further information or would like to discuss how any of the AIA provisions addressed above may impact you, please contact us.
Subscribe for News and Updates
