USPTO Extends First-to-File Comment Period to November 5, 2012

12 October 2012 PharmaPatents Blog

The USPTO has announced that it has “reopened” the comment period for the proposed implementing regulations for the first-to-file provisions of the America Invents Act (“AIA”) which take effect March 16, 2013. Public comments now will be accepted until November 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. Indeed, the decision to reopen the comment period was made in response to “several requests,” and underscores the agency’s interest in receiving thoughtful input from applicants, practitioners and other stakeholders.

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:

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

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