(Information from USPTO Website)
For purposes of evaluating an invention under section 102 or 103 of title 35, United States Code, any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
Memo to Examiners Regarding Tax Strategies Are Deemed to Be Within the Prior Art
The AIA’s amendment to 35 U.S.C. § 282(a)(3) does not affect current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. § 112 according to the USPTO. The change is applicable only in patent validity or infringement proceedings. Thus, the change does not affect current patent examination practices as set forth in the Manual of Patent Examining Procedure § 2165.
Memo to Examiners Regarding Requirement for a Disclosure of the Best Mode
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Memo to Examiners Regarding Claims Directed to or Encompassing a Human Organism
Prioritized examination is being implemented for utility and plant patent applications. When an applicant opts in to prioritized examination, the application is accorded special status during prosecution before the patent examiner. The goal of the USPTO is to provide a final disposition within twelve months, on average, of prioritized status being granted. Initially, a maximum of 10,000 prioritized examination requests will be granted per fiscal year. The prioritized examination procedure substantially tracks the procedure proposed by the USPTO in a notice of proposed rule making in February 2011. Details of the procedure, including information about required fees, are available in the final rule published in the Federal Register on September 23, 2011, at 76 Fed. Reg. 59050. Requests for prioritized examination may be filed beginning on September 26, 2011.
Nonprovisional utility and plant patent applications with no more than four independent claims, thirty total claims, and no multiple dependent claims filed on or after September 26, 2011, are eligible for Prioritized Examination (Track I). Requests for Prioritized Examination of utility patent applications must be filed using EFS-Web. Requests for Prioritized Examination of plant patent applications must be filed in paper. The request for prioritized examination must be present on filing of the utility or plant application.
35 U.S.C. § 118 provides for the making of an application by a person to whom the inventor has assigned, or is under an obligation to assign, the invention. A person who otherwise shows sufficient proprietary interest may also make an application, but on behalf of and as agent for the inventor. Any patent granted on an application filed by a person other than the inventor shall be granted to the real party in interest. 35 U.S.C. § 115 authorizes an individual who is under an obligation of assignment to include certain required statements in an executed assignment in lieu of filing these statements in a separate oath or declaration. Identification of each applicant’s citizenship is no longer required by statute. 35 U.S.C. § 115(h)(2) provides that the Director may not require any additional (supplemental) or other inventor statements if the statements would be equivalent to one already provided. The requirement of without deceptive intention has been deleted from related sections 35 U.S.C. 116, 251, 253, and 256. These provisions apply to any patent application filed on or after September 16, 2012.
35 U.S.C. § 122(e) provides a mechanism for third parties to submit patents, published patent applications, or other printed publications of potential relevance to the examination of a pending patent application with a concise explanation of the asserted relevance of each document submitted. Under 35 U.S.C. § 122(e), such submissions may be made by (1) the later of (i) 6 months after the date of publication or (ii) the date of a first USPTO action on the merits rejecting any claims, or (2) before the date of a notice of allowance, if earlier. Section 122(e) also provides for such fees as the Director may prescribe. This new provision is effective September 16, 2012, and applies to any pending patent application.
The First Inventor to File (FITF) provisions transition the U.S. to a first-inventor-to-file system from a first-to-invent system, while including a 1-year grace period for disclosures by (or derived from) the applicant. Prior art disclosures made publicly available one year or less before the effective filing date can be overcome by the applicant showing (1) the prior art disclosure was by another who obtained the disclosed subject matter from the applicant (a deriver), or (2) the applicant or a deriver publicly disclosed the subject matter before the date of the prior art disclosure. The effective filing date for a claimed invention in an application now includes the filing date of a prior foreign application if the applicant is entitled to foreign priority and thus, in this situation, the 1-year grace period is measured from the foreign priority date claimed. A prior disclosure of the invention which is publicly available more than one year before the effective filing date of an application continues to be a statutory bar. Prior public use or sale is no longer limited to the U.S. For prior art purposes, U.S. patents and patent application publications are available as prior art as of any foreign priority date, provided that the subject matter being relied upon is disclosed in the foreign priority application. Applicants can now rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. 102. In addition, derivation proceedings are established in place of interference proceedings for FITF applications and patents. The FITF provisions take effect on March 16, 2013. 35 U.S.C. § 102 and § 103 in effect before March 16, 2013 apply to applications filed before March 16, 2013, and continuations and divisionals of such applications. 35 U.S.C. § 102 and § 103 in effect on March 16, 2013, apply to any application that ever contains a claim that has an effective filing date on or after March 16, 2013. 35 U.S.C. 102(g) in effect before March 16, 2013, applies if the application ever contains a claim that has an effective filing date before March 16, 2013.
(Information from USPTO Website)
Inter Partes Reexamination Threshold Transition Final Rule (September 16, 2011)
Inter Partes Reexamination Threshold Transition Final Rule (76 Fed. Reg. 59055, September 23, 2011)
35 U.S.C. § 257 provides for supplemental examination of an issued patent. A request for supplemental examination must be filed by the patent owner, and must request that the USPTO “consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish”. The “information” that forms the basis of the request is not limited to patents and printed publications, and may include other issues, e.g., issues under 35 U.S.C. § 112. The standard for granting the request is whether one or more items of information raises a substantial new question of patentability (SNQ), which requires a showing that a reasonable examiner would consider the item of information important in determining the patentability of the claims. Within 3 months after the receipt of a request meeting USPTO requirements, the USPTO will conduct the supplemental examination and will conclude the examination by issuing a certificate indicating whether the information presented in the request raises an SNQ. If an SNQ is raised by one or more items of information in the request, reexamination will be ordered, and will be conducted according to ex parte reexamination procedures (except patent owner will not have the right to file a statement pursuant to 35 U.S.C. § 304). This provision is effective September 16, 2012, and applies to any patent issued before, on, or after the effective date (retrospective effect).
Inter partes review is a new trial proceeding conducted at the Board of Patent Appeals and Interferences (“the Board&rdquo) to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within one year (extendable for good cause by six months). The procedure for conducting inter partes review takes effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.
Post grant review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. The patent owner may file a preliminary response to the petition. A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting post grant review takes effect on September 16, 2012, and generally applies to patents issuing from applications subject to first-inventor-to-file provisions of the AIA.
The transitional program for covered business method patents (TPCBM) is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a covered business method patent. TPCBM proceedings employ the standards and procedures of a post grant review, with certain exceptions. For example, for first to invent patents only a subset of prior art is available to support the petition. Further, a person may not file a petition for a TPCBM proceeding unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or charged with infringement under the patent. The procedure for conducting TPCBM review takes effect on September 16, 2012, but only applies to covered business method patents. The program sunsets for new TPCBM petitions on September 16, 2020.
A derivation proceeding is a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization. An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application. The procedure for derivation takes effect on March 16, 2013.
The failure to disclose the best mode is no longer a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. As stated above, this new practice does not affect the patent examination practice.
With respect to any civil action arising under any Act of Congress relating to patents, other than an action or trial in which an act of infringement under section 271(e)(2) has been pled, parties that are accused infringers may be joined in one action as defendants or counterclaim defendants, or have their actions consolidated for trial, or counterclaim defendants only if (1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process; and (2) questions of fact common to all defendants or counterclaimdefendants will arise in the action.