The United States Patent and Trademark Office Issues Final Rules and Examination Guidelines for First-to-File System

February 19, 2013

On February 14, 2013, the United States Patent and Trademark Office (“USPTO”) published final rules and guidance in the Federal Register implementing the first-inventor-to-file provisions of the America Invents Act (“AIA”), which become effective on March 16, 2013. The Proposed Rules Last summer, the USPTO published proposed rules and examination guidelines to implement the first-inventor-to-file provisions of the AIA. The agency requested comments on these proposed rules and guidelines, and set a comment deadline date of October 5, 2012. In response to requests for more time, the agency later moved the deadline to November 5, 2012. The Final Rules On February 14, 2013, the USPTO published in the Federal Register the final rules and examination guidelines for the AIA. The new final Rules begin with a brief overview of the specific changes to Title 35 which necessitate amendments to the USPTO’s rules, a general discussion of the changes from the proposed rules to these final rules, a discussion of the specific rule amendments, and responses to 57 different comments that the USPTO received in response to its proposed rules. The Rules then end with the specific amendments to 37 CFR part 1 in order to implement the AIA. The Guidelines provide responses to 50 different comments that the USPTO received in response to the proposed guidelines published last summer, and end with new final examination guidelines. The Rules and Guidelines are available online:

First-Inventor-to-File Final Rules (78 Fed. Reg. 11024, February 14, 2013) (available at http://federalregister.gov/a/2013-03453) (“Rules”)

First-Inventor-to-File Final Guidance (78 Fed. Reg. 11059, February 14, 2013) (available at http://federalregister.gov/a/2013-03450) (“Guidelines”)

Modifications to The Grace Period Under Section 102(b)(1)(B) One of the major concerns raised by commentators of the proposed rules and guidelines was the requirement under 102(b)(1)(B) of substantial identity between an inventor’s earlier disclosure and an intervening third-party disclosure that is used to disqualify an application under 102(a). The proposed Examiner Guidelines published last summer stated that:

“Even if the only differences between the subject matter in the prior art disclosure that is relied upon under 35 U.S.C. 102(a) and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial changes, or only trivial or obvious variations, the exception under 35 U.S.C. 102(b)(1)(B) does not apply.”

In the final Guidelines, however, the USPTO clarifies, and arguably broadens significantly, this identity requirement:

“[T]here is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal). … [T]here is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply.”

March 8, 2013 Webcast The PTO will be hosting a public forum to discuss the first-inventor-to-file final rules and guidelines on Friday, March 8, 2013 in the Madison Auditorium on the USPTO’s Alexandria campus. The forum will run from 10:00 AM to 12:30 PM Eastern Daylight Time and will also be webcast on the AIA micro-site (see http://www.uspto.gov/aia_implementation/index.jsp for more information). In addition to discussing first-inventor-to-file final rules and guidance, the PTO will address its new patent service fees and the micro entity discount, both of which go into effect on March 19, 2013.

Overview