We are pleased to share the latest from our friends at PatentDocs.org, the Biotech and Pharma Patent Law and News Blog. The authors, Donald Zuhn and Kevin Noonan, are partners at McDonnell Boehnen Hulbert & Berghoff, LLP, and contribute to Patent Docs on a daily basis. Today’s post comes from a collection of articles on Patent Docs covering the different proposed rule changes announced by the USPTO: preissuance submissions provision, statute of limitations provisions for office disciplinary proceedings, and oath or declaration provisions.
Below is an excerpt from each of the proposed rule changes articles published on Patent Docs:
Today, we address the Office’s notice regarding implementation of the AIA’s preissuance submissions provision (“Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act,” 77 Fed. Reg. 448).
Section 8 of the AIA amends 35 U.S.C. 122 by adding 35 U.S.C. 122(e), which lists certain conditions that apply to a third-party preissuance submission to the Office in a patent application. In particular, AIA § 8 permits any third party to submit for the Office’s consideration and inclusion in an application’s file “any patent, published patent application, or other printed publication of potential relevance to the examination of the application,” provided that the submission is made:
before the earlier of –
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of –
(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
The submission must also “set forth a concise description of the asserted relevance of each submitted document.” This provision of the AIA takes effect on September 16, 2012, and will apply to any patent application filed before, on, or after that date.
Prior to the AIA’s amendment of § 32, disciplinary actions for violations of the USPTO Code of Professional Responsibility were generally understood to be subject to a five-year statute of limitations pursuant to 28 U.S.C. § 2462. The Office notes that with passage of the AIA, “Congress provided the Office with five additional years to bring an action, thus ensuring that the Office had additional flexibility to initiate ‘a [disciplinary] proceeding for the vast bulk of misconduct that is discovered, while also staying within the limits of what attorneys can reasonably be expected to remember’” (quoting the Congressional Record S1372–1373 (daily ed. March 8, 2011) (statement of Sen. Kyl)). The Office also notes that “[t]he one-year limitation period in the AIA reflects that disciplinary actions should be filed in a timely manner from the date when misconduct forming the basis of a disciplinary complaint against a practitioner is made known to ‘that section of PTO charged with conducting section 32 proceedings.’”
The Office’s Federal Register notice implementing the statute of limitations provisions set forth in AIA § 3(k) specifies the date on which the one-year statute of limitations period begins for the three types of disciplinary complaints:
1. Complaints predicated on the receipt of a probable cause determination from the Committee on Discipline — the one-year period begins on the date on which the Director for the Office of Enrollment and Discipline (OED Director) receives a complete, written response to a request for information and evidence from the practitioner.
2. Complaints seeking reciprocal discipline — the one-year period begins on the date on which the OED Director receives a certified copy of the record or order regarding the practitioner being publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended, or disciplinarily disqualified.
3. Complaints seeking interim suspension based on a serious crime conviction — the one-year period begins on the date on which the OED Director receives a certified copy of the record, docket entry, or judgment demonstrating that the practitioner has been convicted of a serious crime.
Today, we address the Office’s notice on “Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act ” (77 Fed. Reg. 982).
The 22-page notice proposes changes that are intended to revise and clarify the rules of practice relating to the inventor’s oath or declaration, assignments containing oath or declaration statements from inventors, and oaths or declarations signed by parties other than the inventors, as well as revise and clarify the rules of practice for powers of attorney and prosecution of an application by an assignee. In particular, the notice proposes changes to the rules to implement AIA § 4, which amends 35 U.S.C. §§ 115 and 118 to change the practice regarding an inventor’s oath or declaration, and AIA § 20, which amends, inter alia, 35 U.S.C. §§ 116, 184, 251, and 256 to remove the “without any deceptive intention” language. A list of the specific changes to each of these sections can be found on pages 982-84 of the notice.
Following the list of specific changes to Title 35, the notice provides a general discussion regarding the implementation of AIA §§ 4 and 20. With regard to these changes, the notice indicates that amended § 115 permits the required inventor statements (i.e., that the application was made or was authorized to be made by the affiant or declarant, and that the individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application) to be made in an oath or declaration under 35 U.S.C. § 115(a), a substitute statement under 35 U.S.C. § 115(d), or an assignment under 35 U.S.C. § 115(e). Because amended § 115 no longer requires an inventor to identify his or her country of citizenship, the Office will no longer require this information to be included in the oath or declaration.