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USPTO Publishes Proposed Rules Governing First-Inventor-to-File |
This story was retrieved from the USPTO website. Neither the USPTO nor any other entity
represented in the article endorses this website.
Press Release, 12-44
USPTO Publishes Proposed Rules
Governing First-Inventor-to-File
Agency on schedule in implementing key provisions of the
America Invents Act
Washington - The U.S. Department of Commerce’s United States Patent and Trademark
Office (USPTO) today published a proposal to amend the rules of practice in patent cases to implement the
“first-inventor-to-file” provision of the Leahy-Smith America Invents Act (AIA). The first-inventor-to-file
provision converts the United States patent system from a “first to invent” system to a first inventor to file
system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of
available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed
invention.
In addition to amending the rules of patent practice, the USPTO is proposing examination
guidelines to inform the public and patent examiners of its interpretation of the first-inventor-to-file provision
of the AIA. The guidelines likewise are intended to advise the public and patent examiners how the changes
introduced by the first-inventor-to-file provision impact the sections of the Manual of Patent Examining Procedure
pertaining to novelty and obviousness.
“The first-inventor-to-file provision of the America Invents Act,
one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability
determinations,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “At
the same time, the provision brings the United States closer in harmonizing our patent law with those in other
countries around the globe.”
The first-inventor-to-file proposed rules and guidelines published today in
the Federal Register have a public comment period that runs until October 5, 2012. The USPTO also plans to discuss
the proposed rules and guidance at a series of “roadshows” scheduled to occur in Alexandria, Va.; Atlanta, Ga.;
Denver, Colo.; Detroit, Mich.; Houston, Texas; Los Angeles, Calif.; Minneapolis, Minn.; and New York, N.Y., this
September. Further information about the proposed rules and guidelines may be found in the Federal Register
Notice:
https://www.uspto.gov/aia_implementation/first-inventor-to-file_proposed_rules.pdf.
Further information about the “roadshows” may be found on the AIA micro-site available at
https://www.uspto.gov/aia_implementation/roadshow.jsp.
For non-press inquiries about the first-inventor-to-file proposed rules, contact Susy Tsang-Foster, Legal
Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy,
at 571-272-7711. For non-press inquiries about the proposed examination guidelines, contact Mary C. Till, Senior
Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination
Policy, at 571-272-7755.
Stay current with the USPTO’s implementation of the America Invents Act by subscribing to receive e-mail
updates. Visit our Subscription Center at www.uspto.gov/subscribe.
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