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IP-Watch interns talk about their Geneva experience in summer 2013. 2:42.

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    USPTO Finalises Rules For ‘First-Inventor-To-File’ System Switch

    Published on 13 February 2013 @ 9:10 pm

    By for Intellectual Property Watch

    The 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). This comes just days after a change in patent fees.

    The “first-inventor-to-file” provision of the AIA goes into effect on 16 March 2013 and represents the final implementation of the changes mandated by the 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,” USPTO said in a press release.

    The AIA guidelines authorise derivation proceedings 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, according to the USPTO press release. The AIA also creates a one-year grace 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, it said.

    USPTO Acting Director Teresa Stanek Rea’s remarks on the final rules are here.

    Under the new first-inventor-to-file system, the inventor who files a patent application first will own the rights to the invention. Currently, the US uses a “first-to-invent” system, which is at odds with most of the rest of the international community (IPW, US Policy, 13 September 2012). Prior to the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent” system.

    The USPTO today also published final examination guidelines setting out 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 guidelines detail “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.”

    The new rules are being published in the Federal Register here, and the guidelines can be found in the Federal Register here.

    New Patent Fees

    In January, the USPTO also finalised the new patent fees that will take effect under the AIA on 19 March, shortly after the “first-inventor-to-file” changes.

    The fees are intended to provide the USPTO with revenue sufficient to cover its cost of operations while reducing current patent application backlog and upgrading the USPTO’s information technology  infrastructure.

    Courtenay Brinckerhoff of law firm Foley & Lardner commented on the new patent fees, saying they will increase patent prosecution costs for most applications, especially for larger firms.

    “Although the USPTO highlights the large number of fees that are being set below their calculated “cost recovery” basis, even fees in that category are increasing,” she said. For example, the minimum total fees due at filing are increasing by $340 for a large entity. Common fees paid during prosecution such as excess claim fees and extension of time fees also are increasing substantially, as are RCE [request for continued examination] fees and the total fees for an Appeal to the Board.”

    So while the USPTO notes that there no longer will be a fee for filing an Appeal Brief, she said, “applicants who often file Notices of Appeal without having to prepare an Appeal Brief will feel the pinch of the higher Notice of Appeal Fee, and applicants who have to pursue their case all the way to the Board will face the new fee for transferring the case to the Board, which will be $2000 for a large entity.”

    Brinckerhoff said the main beneficiaries of the new fee structure will be applications that qualify for micro entity status, because they will be able to pay most fees at a new 75 percent reduction of the large entity rate (and small entities enjoy a 50 percent reduction of many fees).

    And separately, another move by the USPTO as it transitions away from Director David Kappos was the 25 January announcement of the release of a new calculator that it said “enables members of the public to estimate the expiration date of a utility, plant, or design patent.” The calculator can be downloaded at http://www.uspto.gov/patents/law/patent_term_calculator.jsp.

     

    Kelly Burke may be reached at info@ip-watch.ch.

     

    Comments

    1. USPTO finalizes first to file guidance | Innovation Asset Group News says:

      [...] to Intellectual Property Watch, the first to file transition will be immediately followed by a restructuring of patent fees as a [...]


    Leave a Reply

    We welcome your participation in article and blog comment threads, and other discussion forums, where we encourage you to analyse and react to the content available on the Intellectual Property Watch website. By participating in discussions or reader forums, or by submitting opinion pieces or comments to articles, blogs, reviews or multimedia features, you are consenting to these rules.

    We welcome your participation in article and blog comment threads, and other discussion forums, where we encourage you to analyse and react to the content available on the Intellectual Property Watch website.

    By participating in discussions or reader forums, or by submitting opinion pieces or comments to articles, blogs, reviews or multimedia features, you are consenting to these rules.

    1. You agree that you are fully responsible for the content that you post. You will not knowingly post content that violates the copyright, trademark, patent or other intellectual property right of any third party or which you know is under a confidentiality obligation preventing its publication and that you will request removal of the same should you discover that you have violated this provision. Likewise, you may not post content that is libelous, defamatory, obscene, abusive, that violates a third party's right to privacy, that otherwise violates any applicable local, state, national or international law, that amounts to spamming or that is otherwise inappropriate. You may not post content that degrades others on the basis of gender, race, class, ethnicity, national origin, religion, sexual preference, disability or other classification. Epithets and other language intended to intimidate or to incite violence are also prohibited. Furthermore, you may not impersonate others.

    2. You understand and agree that Intellectual Property Watch is not responsible for any content posted by you or third parties. You further understand that IP Watch does not monitor the content posted. Nevertheless, IP Watch may monitor the any user-generated content as it chooses and reserves the right to remove, edit or otherwise alter content that it deems inappropriate for any reason whatever without consent nor notice. We further reserve the right, in our sole discretion, to remove a user's privilege to post content on our site. IP Watch is not in any manner endorsing the content of the discussion forums and cannot and will not vouch for its reliability or otherwise accept liability for it.

    3. By submitting any contribution to IP Watch, you warrant that your contribution is your own original work and that you have the right to make it available to IP Watch for all purposes and you agree to indemnify IP Watch, its directors, employees and agents against all damages, legal fees and others expenses that may be incurred by IP Watch as a result of your breach of warranty or of these terms.

    4. You further agree not to publish any personal information about yourself or anyone else (for example telephone number or home address). If you add a comment to a blog, be aware that your email address will be apparent.

    5. IP Watch will not be liable for any loss including but not limited to the following (whether such losses are foreseen, known or otherwise): loss of data, loss of revenue or anticipated profit, loss of business, loss of opportunity, loss of goodwill or injury to reputation, losses suffered by third parties, any indirect, consequential or exemplary damages.

    6. You understand and agree that the discussion forums are to be used only for non-commercial purposes. You may not solicit funds, promote commercial entities or otherwise engage in commercial activity in our discussion forums.

    7. You acknowledge and agree that you use and/or rely on any information obtained through the discussion forums at your own risk.

    8. For any content that you post, you hereby grant to IP Watch the royalty-free, irrevocable, perpetual, exclusive and fully sub-licensable license to use, reproduce, modify, adapt, publish, translate, create derivative works from, distribute, perform and display such content in whole or in part, world-wide and to incorporate it in other works, in any form, media or technology now known or later developed.

    9. These terms and your posts and contributions shall be governed and interpreted in accordance with the laws of Switzerland (without giving effect to conflict of laws principles thereof) and any dispute exclusively settled by the Courts of the Canton of Geneva.

     

     
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