What Will Be Different on Monday? (The September 16, 2012 Patent Reform Changes)

The next wave of U.S. patent reform changes embodied in the Leahy-Smith America Invents Act takes effect on Sunday, September 16, 2012. The following is a list of some of the things that will be different when we come to work on Monday. Because of the different effective date provisions, some of these changes will impact granted patents and/or pending patent applications, as well as new U.S. patent applications filed on or after September 16, 2012.

Patent Prosecution Changes

The following changes apply to U.S. patent applications filed on or after September 16, 2012:

• Prosecution By Assignee
  An assignee (or party to whom the inventors are obligated to assign the invention) can act as the applicant. In such cases, the assignee (not the inventors) should execute a power of attorney document.
• Inventor Oath/Declaration
  The executed inventor oath/declaration can be submitted at the close of prosecution, in response to a Notice of Allowability, as long as the inventor information is provided in an Application Data Sheet at the time the application is filed or within the Missing Parts/Missing Requirements response period.
  The statements required in the inventor oath/declaration are different, so new forms are required.
  The inventor oath/declaration statements can be included in a combined assignment/declaration document.

As noted above, these changes apply to any U.S. patent application “filed” on or after September 16, 2012, which includes new continuation and divisional applications filed on or after September 16, 2012. However, only U.S. national phase applications that are based on PCT applications filed on or after September 16, 2012 are subject to these changes. 

• Reissue Application Practice
  The requirements for the reissue oath/declaration are simplified, but include a new requirement for broadening reissue applications to identify a claim that the application seeks to broaden.

These changes apply to reissue applications filed on or after September 16, 2012.

 The following changes apply to U.S. patent applications that are pending on or after September 16, 2012:

• Correction Of Inventorship
  The requirements for correction of inventorship and changing the order of inventors are simplified.
• Preissuance Submissions By Third Parties
  Third parties can submit any patent, published patent application, or other printed publication of potential relevance to the examination of an application. The submission must be filed within a strict time period, generally before the earliest of a first Office Action on the merits or Notice of Allowance.

The rules implementing these and other prosecution-related changes are set forth in a single rule package.

 Post-Grant Changes

The following changes apply to U.S. patents that are in force on or after September 16, 2012:

• Supplemental Examination
  Patent owners can request a supplemental examination proceeding to obtain consideration, reconsideration, or correction of information believed to be relevant to the patent. Under certain circumstances, pursuing supplemental examination can shield the patent from unenforceability arising out of inequitable conducts charges surrounding the information at issue. As set forth in the USPTO rule package, the basic filing fee for supplemental examination is $5,140 plus the (refundable) $16,120 fee for the ex parte reexamination that may be ordered as a result of the supplemental examination.
• Third Party Requests for Ex Parte Reexamination
  Third party requesters must certify that their request is not barred by statutory estoppel arising out of an inter partes review or post-grant review proceeding. The basic filing fee for a request for ex parte reexamination will increase to $17,750.
• Inter Partes Review
  Inter partes review replaces inter partes reexamination, which is no longer available. Inter partes review is more “trial-like” and will be conducted in front of the new Patent Trial and Appeal Board within the USPTO. The basic filing fee for a petition challenging up to 20 claims is $27,200.
  Several USPTO rule packages relate to Inter Partes Review: The first notice sets forth general procedures, the second notice sets forth specific rules, and the third notice provides a “practice guide.”
• Submission of Written Statements Of Patent Owner
  Third parties may submit in the file of a granted patent certain written statements filed by the patent owner in a Federal court or USPTO proceeding in which the patent owner took a position on the scope of any claim in the patent.

 The following changes apply to certain business method patents:

• Post grant review
  Certain business method patents are subject to post grant review by parties who have been charged with infringement. The basic filing fee for a petition challenging up to 20 claims is $35,800.
  A USPTO rule package 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.

USPTO AIA “Help” Lines

The USPTO has announced two new AIA “help” lines that will be available starting September 17, 2012:

email: HELPAIA@uspto.gov
phone: 1 855 HELP AIA