USPTO Publishes Final Rules and Guidelines Governing First-Inventor-to-File
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February 13, 2013
Publishes Final Rules and Guidelines Governing First-Inventor-to-File
Actions Complete Implementation of America Invents Act Rules
Washington—The U.S. Department
of Commerce’s United States Patent and Trademark Office (USPTO) today published final rules of
practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents
Act (AIA). The provision, one of the hallmarks of the AIA, is a major step towards harmonization
of the U.S. patent system with those of the United States’ major trading partners, allowing greater
consistency in the prosecution and enforcement of U.S. patents. The AIA also includes safeguards
to ensure that only an original inventor or his assignee may be awarded a patent under the first-inventor-to-file
system. The first-inventor-to-file provision of the AIA goes into effect on March 16, 2013, and
represents the final implementation of the changes mandated by the AIA.
The USPTO also
today published final examination guidelines setting forth the agency’s interpretation of how
the first-inventor-to-file provision alters novelty and obviousness determinations for an invention
claimed in a patent application. In particular, the agency’s final examination guidelines
inform the public and patent examiners how the AIA’s changes to the novelty provisions of law
alter the scope of what is prior art to a claimed invention and how the new grace period operates.
“Migration to a first-inventor-to-file system will bring greater transparency, objectivity,
predictability, and simplicity to patentability determinations and is another step towards harmonizing
U.S. patent law with that of other industrialized countries,” said Acting Under Secretary of Commerce
for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea.
the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent”
system. First-inventor-to-file complements USPTO’s existing efforts toward greater harmonization
with foreign counterparts. One result of these efforts is the
Cooperative Patent Classification
system launched on January 1st of this year, a common classification system that will enhance
the examination capabilities of both the USPTO and the European Patent Office. Another such effort
is USPTO’s ongoing coordination with the world’s largest patent offices--the so-called Tegernsee
Group dialogues. The USPTO
currently is seeking comment
on these initiatives.
The AIA authorizes
before the USPTO, which will ensure that a person will not be able to obtain a patent for an invention
that he or she did not actually invent. The AIA also creates a one-year
period, which will ensure that the patentability of an invention is not defeated by the inventor’s
own disclosures, disclosures of information obtained from the inventor, or third party disclosures
of the same information as the inventor’s previous public disclosures. The new micro-entity (75%)
discounts for patent applicants also make it more affordable than ever for independent inventors
to seek patents.
The USPTO will provide more information on the first-inventor-to-file
final rules and examination guidelines at a public training session to be held on Friday March
8, 2013 at the USPTO’s headquarters in Alexandria, Virginia. The training session will be
webcast. Details on webcast access will be available on the AIA micro-site at
Federal Register publication – Changes to Implement First Inventor to File Provisions of Leahy-Smith
America Invents Act – can be found at
and the Federal Register publication – Implementing First Inventor to File Provisions of Leahy-Smith
America Invents Act: Examination Guidelines – can be found at
The public may contact the AIA Helpline at 1-855-HELP-AIA (1-855-435-7242) or the AIA Email
at HELPAIA@uspto.gov for answers to first-inventor-to-file
and other AIA related questions.
Additionally, inquiries about the first-inventor-to-file
final rules may be directed to Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration,
Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711; and inquiries
about the first-inventor-to-file final examination guidelines may be directed to Mary C. Till,
Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner
for Patent Examination Policy, at 571-272-7755.
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