The HDP AIA Blog is a convenient way to keep up with developments relating to the America Invents Act.
For the time being this is a purely internal blog, but we will considering making the blog public. We are counting on everyone to participate either by submitting posts or participating in discussions. Please contribute your thoughts about AIA implementation, and any useful information that you create or come across.
On February 10, 2012, the U.S. Patent and Trademark Office published proposed regulations for the new Inter Partes Review Procedure, which takes effect on September 16, 2012. These proposed regulations can be found at Federal Register Volume 77, Number 28: http://www.gpo.gov/fdsys/pkg/FR-2012-02-10/html/2012-2534.htm
On February 10, 2012, the U.S. Patent and Trademark Office published proposed regulations for the new Post-Grant Review Procedure, which takes effect on September 16, 2012, although the first Post-Grant Review cannot occur until a patent issues on an application filed on or after March 16, 2013. These proposed regulations can be found at Federal Register Volume 77, Number 28: http://www.gpo.gov/fdsys/pkg/FR-2012-02-10/html/2012-2529.htm.
On February 10, 2012, the U.S. Patent and Trademark Office published proposed regulations for the new Inter Partes Review Procedure, which takes effect on September 16, 2012. These proposed regulations can be found at Federal Register Volume 77, Number 28: http://www.gpo.gov/fdsys/pkg/FR-2012-02-10/html/2012-2535.htm
On February 10, 2012, the U.S. Patent and Trademark Office published proposed regulations for the transitional program for covered business method patents. These proposed regulations can be found at Federal Register Volume 77, Number 28: http://www.gpo.gov/fdsys/pkg/FR-2012-02-10/html/2012-2532.htm
On February 9, 2012, the U.S. Patent and Trademark Office published proposed regulations to govern the trials of Post-Grant Review and Inter Partes Review proceedings before the Patent Trials and Appeals Board. The Post Grant Review Inter Partes Review proceedings take effect on September 16, 2012, although the first Post-Grant Review cannot occur until a patent issues on a patent application filed on or after March 16, 2013. These proposed regulations can be found at Federal Register Volume 77, Number 27: http://www.gpo.gov/fdsys/pkg/FR-2012-02-09/html/2012-2525.htm
On January 25, 2012, the U.S. Patent and Trademark Office published proposed regulations for the new Supplemental Examiation, which takes effect on September 16, 2012. These proposed regulations can be found at Federal Register Volume 77, Number 16: http://www.gpo.gov/fdsys/pkg/FR-2012-01-25/html/2012-1480.htm
On January 6, 2012, the U.S. Patent and Trademark Office published proposed regulations for oaths and declarations, to implement changes in the patent statute that take effect on September 16, 2012. These proposed regulations can be found at Federal Register Volume 77, Number 4: http://www.gpo.gov/fdsys/pkg/FR-2012-01-06/html/2011-33815.htm
On Jnuary 5, 2012, the U.S. Patent and Trademark Office published proposed regulations for Preissuance Submissions, which take effect on September 16, 2012. These proposed regulations can be found at Federal Register Volume 77, Number 3: http://www.gpo.gov/fdsys/pkg/FR-2012-01-05/html/2011-33811.htm
Amended 35 USC §301 Citation of Prior Art and Written Statements now provides:
§301 Citation of Prior Art and Written Statements
(a) IN GENERAL.–Any person at any time may cite to the Office in writing–
(1) prior art consisting of patents or printed publications which that person believes to have a bearing on the patentability of any claim of a particular patent; or
(2) statements of the patent owner filed in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of a particular patent.
(b) OFFICIAL FILE.–If the person citing prior art or written statements pursuant to subsection (a) explains in writing the pertinence and manner of applying the prior art or written statements to at least 1 claim of the patent, the citation of the prior art or written statements and the explanation thereof shall become a part of the official file of the patent.
(c) ADDITIONAL INFORMATION.–A party that submits a written statement pursuant to subsection (a)(2) shall include any other documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.
(d) LIMITATIONS.–A written statement submitted pursuant to subsection (a)(2), and additional information submitted pursuant to subsection (c), shall not be considered by the Office for any purpose other than to determine the proper meaning of a patent claim in a proceeding that is ordered or instituted pursuant to section 304, 314, or 324. If any such written statement or additional information is subject to an applicable protective order, such statement or information shall be redacted to exclude information that is subject to that order.
(e) CONFIDENTIALITY.–Upon the written request of the person citing prior art or written statements pursuant to subsection (a), that person’s identity shall be excluded from the patent file and kept confidential.
Effective September 16, 2012, anyone (including the patent owner) will be able to cite in a patent file statements of a patent owner that were filed in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim in the patent. This submission can request in writing that his/her identity be kept confidential, and it will be excluded from the patent file.
The statute requires the submitter (i) explain the pertinence and manner of applying the patent owner’s written statement to at least one claim of the patent; and (ii) include any documents, pleadings, or evidence from the proceeding in which the statement was filed that addresses the written statement.