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On July 26, 2012, the U.S. Patent and Trademark Office (USPTO)
published proposed rules and examination guidelines for the
first-inventor-to-file (FITF) provisions of the Leahy-Smith America
Invents Act (AIA). 77 Fed. Reg. 43,742 (July 26, 2012); 77 Fed.
Reg. 43,759 (July 26, 2012). The publication of the proposed rules
and examination guidelines opens a public-comment period that runs
until October 5, 2012. During this time period, the USPTO seeks the
benefit of the public's view on the implementation of the FITF
provisions of the AIA. Comments can be submitted electronically or
by mail and will be available for public inspection at the
USPTO's Alexandria, VA, location or on the USPTO's website
(http://www.uspto.gov).
Section 3 of the AIA converts the U.S. patent system from a
"first-to-invent" to an FITF system. The FITF provisions
take effect on March 16, 2013. The proposed changes detail the
rules of agency practice for implementing the AIA. Namely, the
proposed rules make changes to title 37 of the Code of Federal
Regulations that are consistent with, and address the examination
issues raised by, the changes in section 3 of the AIA.
Generally, the proposed rules encompass the following
changes:
USPTO adds definitions from the AIA to the rules of
practice.
USPTO amends existing affidavit and declaration provisions for
showing attribution of a disclosure to an inventor or joint
inventor, prior disclosure, or derivation under 35 U.S.C. §
102(b).
USPTO provides certain time limits for making a claim to
priority and filing a certified copy of a foreign application.
USPTO eliminates provisions directed to statutory invention
registrations.
USPTO includes additional requirements for nonprovisional
applications filed on or after March 16, 2013, that identify
whether the application is subject to 35 U.S.C. §§ 102
and 103 as amended by the AIA.
The proposed guidelines, which were also published with the
proposed rules, detail the agency's interpretation of 35 U.S.C.
§§ 102 and 103 as amended by the AIA. The proposed
guidelines also inform the public and USPTO personnel on how
the USPTO's implementation of the FITF provisions will impact
the Manual of Patent Examining Procedure. Notably, the proposed
examination guidelines explain the type of prior art that can
preclude a patent under 35 U.S.C. § 102(a) and the type of
prior art that falls under the exceptions of § 102(b).
In September 2012, the USPTO will discuss the FITF proposed rules
and examination guidelines at various cross-country road shows in
Alexandria, VA; Denver, CO; Detroit, MI; Houston, TX; Los Angeles,
CA; Minneapolis, MN; and New York City, NY. Specific information
regarding those road shows can be found at http://www.uspto.gov/aia_implementation/roadshow.jsp.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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