First-to-File Comments Due October 5, 2012

04 October 2012 PharmaPatents Blog

Although the first-to-file provisions of the America Invents Act (“AIA”) do not take effect until March 16, 2013, public comments on the USPTO’s proposed implementing regulations are due by Friday, October 5, 2012. The USPTO has demonstrated that it takes public comments seriously, and modified some of the proposed rules for the provisions that took effect on September 16, 2012 in view of public comments. Applicants, practitioners and other stakeholders should not miss this opportunity to shape how the USPTO implements these significant changes to U.S. patent law.

Controversial Proposed Rules

The following proposed rules have garnered attention from commentators:

Formal Requirements

  • the requirement that certified copies of foreign priority applications be filed within certain (early) time periods
  • the requirement for nonprovisional applications that straddle the first-to-file effective date, for applicants to identify applications that include claims with an effective filing date on or after March 16, 2013, or that include additional disclosure as compare to the earlier application
  • the ability of applicants to identify grace period inventor disclosures in the specification

The Meaning of “Sale” in § 102(a)(1)

  • the extent to which a “sale” must be “public” in order to qualify as prior art under § 102(a)(1)

Requirements for Invoking the Exceptions To § 102

  • the requirement (for all exceptions) to show that the inventor(s) invented the subject matter at issue
  • the requirement (for the exception for inventor-originated disclosures) to show an enabling communication from the inventor to another
  • the requirement (for the exception for shielding disclosures) of near identity between the shielding disclosure and the disclosure being disqualified
  • the ability of the USPTO to require an applicant to file a petition to institute a derivation proceeding if the applicant attempts to disqualify the prior art effect of a pending U.S. application that claims the same subject matter

Submitting Comments

Members of the public can submit written comments by email:

fitf_rules@uspto.gov

by postal mail:

Mail Stop Comments–Patents
Commissioner for Patents
P.O. Box 1450
Alexandria, VA, 22313-1450
Attention: Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration

or via the Federal eRulemaking Portal (see http://www.regulations.gov).

This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney. This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary. The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites. In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.

Related Services

Insights

The DOL Tries to Say Goodbye—And Seriously, We Mean It—to the 80/20 Rule for Tipped Employees
21 October 2019
Labor & Employment Law Perspectives
To Stalk or Not to Stalk . . . That Is the Question – Using Social Media for Applicant Review
21 October 2019
Labor & Employment Law Perspectives
New Patent Subject Matter Eligibility Updates Seeks Examination Predictability
21 October 2019
Legal News: Intellectual Property
Cryptocurrency in China is like BIG BROTHER in 1984!
20 October 2019
Internet, IT & e-Discovery Blog
PATH Summit 2019
18-20 December 2019
Arlington, VA
MedTech Impact Expo & Conference
13-15 December 2019
Las Vegas, NV
Review of 2020 Medicare Changes for Telehealth
11 December 2019
Member Call
BRG Healthcare Leadership Conference
06 December 2019
Washington, D.C.