An Overview of the Final Patent Reform Rules Packages Effective September 16, 2012

15 August 2012 PharmaPatents Blog

On August 14, 2012, the USPTO published the final rule packages for implementing the patent reform changes that take effect September 16, 2012. Several colleagues and I prepared Legal News Alert articles which provide an overview of key changes embodied in the rules.

This article looks at some of the key provisions relating to an assignee’s ability to file and prosecute patent applications, changes to the inventor oath/declaration requirements, changes to reissue application practice, simplified procedures for correcting inventorship, the heightened importance of application data sheets, and the elimination of “without deceptive intent” requirements.

This article looks at the new rules for the new supplemental examination proceedings and pre-issuance submissions by third parties.

This article looks at the four rules packages which implement the new trial proceedings that will be conducted by the Patent Trial and Appeal Board (Board), including inter partes review, post-grant review, and the transitional program for covered business method patents.

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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