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

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 [1]. 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 [1].

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 [2]). 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 [3], and the guidelines can be found in the Federal Register here [4].

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 [5].


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