Live from the 6th Annual Patent Law Institute – Inside the PTO: AIA Rule Changes


Live from the 6th Annual Patent Law Institute, I am blogging from the panel entitled, “PTO Doings I: Rules and Regs That Are/Are Not Changing for 2012″. The featured panelists include Institute co-Chair John M. White, Brian Hanlon, Robert J. Spar. This afternoon’s discussion continues the close look at the outcome of the PTO rules and policy-making apparatus.  Highlights from our faculty speakers:

Two basic triggers for 2012 USPTO activity include:

  1. Office self-initiated actions: The Office moved forward with a number of efforts to improve and streamline the examination/prosecution process, and
  2. The AIA, enacted on Sept. 16, 2011: Required the USPTO to take implementing actions, essentially in 3 timed phases, for items effective in:
  1. Phase 1: immediately, or within 60 days
  2. Phase 2: in one year, or on Sept.16, 2012, and
  3. Phase 3: in 18 months, or on March 16, 2013.

PTO Self-initiated examination related rule makings/actions include

  1. new BPAI (Appeals) rules,
  2. request for Comments on Complete Patent Assignment Information,
  3. pilot program for extended time period to reply to a Notice to File Missing Parts of Nonprovisional Application,
  4. new “materiality to patentability standard” for the duty to disclose information in patent applications,
  5. revision of Patent Term Adjustment (PTA) provisions relating to Information Disclosure Statements (IDSs),
  6. revision of patent term adjustment (PTA) provisions relating to Appellate Review,
  7. termination of the PTO‟s “Project Exchange”Program (on Dec. 31, 2011); and
  8. limited extension of the Green Technology Pilot Program (for an additional 500 applications [for a total of 3500 applications], or until Mar. 30, 2012.

AIA related implementation rule makings or actions are linked to the timing of effective dates. As such, the Office has broken its implementation efforts into 3 groups:

  1. Group I: 10 provisions of the AIA that were effective upon enactment (Sept. 16, 2011) or within 2 months (Nov. 16, 2011),
  2. Group II: 7 provisions of the AIA that are effective in 1 year, or on Sept. 16, 2012.
  3. Group III: 3 provisions of the AIA that are effective in 18 months, or on Mar. 16, 2013.

The complex, extensive changes (first inventor to file and derivation proceedings) need more time.
35 U.S.C.§122 – Third party submission of prior art in a patent application: this section has been revised to add a new paragraph that provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a pending patent application with a concise explanation of the asserted relevance of each document submitted.

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