America Invents Act (AIA) Frequently Asked Questions

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America Invents Act (AIA) - Best Mode - Other

No. As this change is applicable only in patent validity or infringement proceedings, it does not change current patent examination practices set forth in MPEP § 2165.

The failure to disclose the best mode shall no longer be 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 state above, this new practice does not affect the patent examination practice.

The effective date for the Best Mode provision in the AIA is September 16, 2011.

America Invents Act (AIA) - Citation of Patent Owner Statements in a Patent File - Other

A third party or the patent owner may cite patent owner statements at any time.

No, the Office will only consider such a statement after reexamination has been ordered and only to inform the Office's determination of the proper scope and meaning of the claims.

No, the Office may not consider such a patent owner claim scope statement when deciding whether to order or institute an administrative trial proceeding.

No, the examiner in a reexamination will not necessarily adopt the interpretation of the claims based solely upon a written statement of the patent owner. Claim construction standards for reexamination are unaffected. A written statement of the patent owner will be weighed with all other relevant information in making an independent determination of the proper claim scope and meaning of the claims by the Office once a reexamination proceeding is ordered.

No, the deposition transcript does not qualify as a written statement by the patent owner because the transcript was not filed by the patent owner in the Federal court proceeding. Instead, it was filed by the accused infringer. Thus, the content of the transcript are not taken to be a position by the patent owner in the Federal court proceeding.

No, the written statement of the patent owner must be directed to the claims of the particular patent to which the statement is directed for the statement to be eligible for entry into the official file of that patent.

There are several items that must be included for a patent owner claim scope statement to be entered into the official file of a patent:

    1. An explanation of the pertinence and manner of applying the written statement to at least one claim of the patent;
    2. Any other documents, pleadings, and evidence from the proceeding in which the statement was filed that address the written statement;
    3. Identification of the forum and proceeding in which patent owner filed the statement;
    4. Identification of the specific papers and portions of the papers submitted that contain the statement;
    5. Explanation of how each statement submitted constitutes a position taken by patent owner on the scope of any claim of the patent; and
    6. Proof of service upon the patent owner if the statement is submitted by a third party.

Yes, a patent owner submitter may state how any claim is patentable over any submitted patent owner claim scope statement.

Either a third party or the patent owner may cite patent owner statements in a patent file.

Yes, a third party can request in writing to maintain his/her identity in confidence, and it will be excluded from the patent file.

A statement of the patent owner filed by the patent owner 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 the patent may be filed.

No, the ITC is a Federal agency, not a Federal court. The citation of patent owner statements provision expressly provides for the submission of a statement filed in a proceeding before a Federal court or the Office only.

The effective date for the citation of patent owner statements provision in the AIA is September 16, 2012.

America Invents Act (AIA) - Derivation Proceedings - Other

Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit.

Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship.

Yes, the AIA permits the parties to a derivation proceeding to settle. A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record.

A derivation prroceeding requires that an applicant for patent file a petition to institute the proceeding. The petition must set forth with paticularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioiner. The petition must be made under oath and supported by substantial evidence. The petition must be filed within 1 year of the date 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.

In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition. The Patent Trial and Appeal Board will decide petitions for derivation and conduct any ensuing derivation proceeding.

The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner's application without authorization.

The effective date for the derivation provision in the AIA is March 16, 2013.

America Invents Act (AIA) - Fees - Other

This new fee will be effective at 12:00 a.m. on Tuesday, November 15 2011. This fee applies to a patent application filed by mail, rather than via the Office's electronic filing system (Patent Center). This includes PCT international applications filed with the USPTO as the Receiving Office. All applications filed by mail or hand delivery on or after November 15, 2011, must include the additional $400 ($200 for small entity) fee. Requests for Continued Examination (RCE) are not subject to the additional $400 ($200 for small entity) fee.

No, the application filing limit includes nonprovisional applications, but not provisional applications. Likewise, the application filing limit excludes foreign applications and international (PCT) applications for which the basic U.S. national stage filing fee was not paid.

Yes, the applicant potentially may still qualify as a micro entity. There is no limit on the number of previously-filed patent applications that may be excluded from the "four previously filed application" limit contained in the "gross income" definition for micro entity status on the basis of prior employment.

No, an applicant that does not qualify for micro entity status may qualify for small entity status. A small entity is entitled to a 50 percent reduction in patent service fees. An applicant may qualify as a small entity if the applicant is an individual person meeting the conditions set forth in 37 CFR 1.27(a)(1), a small business concern meeting the conditions set forth in 37 CFR 1.27(a)(2), or a not-for-profit organization meeting the conditions set forth in 37 CFR 1.27(a)(3).

Yes, an applicant must pay the fee that is in effect on the date when payment is received by the Office. The utility issue and publication fees due on March, 19, 2013, are $1,780 and $300, respectively, for large entities for a total fee due of $2,080. Likewise, if an application is allowed prior to January 1, 2014, but the applicant pays the issue and publication fees on or after January 1, 2014, the applicant is required to pay a large entity issue fee of $960 plus publication fee of $0 for a total of $960.

Yes, a patentee must pay the fee that is in effect on the date when payment is received by the Office. The maintenance fees for a large entity due on March 19, 2013, are $1,600 for the first-stage payment due at 3.5 years; $3,600 for the second-stage payment due at 7.5 years; and $7,400 for the third-stage payment due at 11.5 years.

The applicable fee amount is the amount in effect on the day the fee is paid. If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees. To avoid insufficient payment of fees, applicants are encouraged to provide authorization in the application file to charge fees to a specified Deposit Account.

No, the reserve fund is only effective upon the first day of fiscal year 2012 (October 1). So any fees collected in excess of USPTO's appropriations in FY 2011 (see Question FEE2050) would not be deposited in this new fund. Any fees collected in excess of FY 2012 amounts this coming year will be deposited in the new fund and, assuming the USPTO receives appropriations language giving the agency the authority to access these fees, would be available to the USPTO subject to submission of a reprogramming request.

A complete listing of the new patent fee amounts effective on March 19, 2013 is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

The USPTO has updated its fee schedule format to include a new column denoting micro entity fees. A complete listing of the new fee amounts effective on March 19, 203, including the new micro entity fee amounts, is available at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

An applicant is required to pay the fee for a second or subsequent RCE for the application based on the total number of RCEs filed for the application, regardless of other whether the first or any earlier RCEs were filed prior to March 19, 2013.

No, the USPTO has issued a Partial Waiver of the Appeal Forwarding Fee if the fee for filing an appeal brief was filed before March 19, 2013. The waiver avoids the payment of extra fees that would otherwise result when an applicant paid both the appeal brief and accompanying fee on or before March 18, 2013, and also would be required to pay the fee to forward an appeal on or after March 19, 2013. As a result of this waiver, an applicant will not be required to pay both fees.

Yes, an applicant can make a simple statement that he/she/it is no longer eligible for micro entity status without identifying the particular reason(s) for loss of entitlement to micro entity status.

An applicant who loses entitlement to micro entity status cannot pay a fee in the small or undiscounted amount without first or simultaneously notifying the Office in writing of loss of micro entity status.

An applicant may file single notice to the USPTO indicating the concurrent loss of entitlement to micro entity status and certification of small entity status.

Almost all fees included in the patent fee final rule become effective at 12:00 a.m. Eastern Daylight Time on Tuesday, March 19, 2013. However, the following fee changes become effective at 12:00 a.m. Eastern Daylight Time on Wednesday, January 1, 2014:

  • § 1.18(a)(1), (b)(1), (c)(1), and (d)(1): patent issue and publication fees
  • § 1.21(h)(1): fee for recording patent assignment, agreement, or other document - submitted electronically
  • § 1.482(a)(1)(i), (a)(1)(ii), and (a)(2)(i): PCT international preliminary and supplemental examination fees
  • § 1.445(a)(1), (a)(4), (a)(2)(i), (a)(3), ad (a)(1)(ii): PCT international application transmittal and search fees

Yes, an independent inventor can sign the micro entity certification provided the inventor is identified as the applicant.

A practitioner who represents three joint inventors who qualify for micro entity status may sign a single micro entity certification on behalf of the three joint inventors.

The micro entity certification must accompany the issue fee payment in the micro entity amount or be filed in the application prior to payment of the issue fee payment in the micro entity amount. Therefore, the applicant has discretion to do either (i) or (ii).

No, a micro entity certification must certify that all of the requirements for micro entity status as they appear in 37 C.F.R. 1.29(a) or (d), as applicable; a simple statement alleging entitlement to micro entity status is not sufficient. Applicants are encouraged to use the USPTO micro entity certification forms available on the USPTO forms webpage at http://www.uspto.gov/forms.

Yes, an applicant may file a micro entity certification form before March 19, 2013. However, an applicant who is eligible for the micro entity discount cannot pay fees subject to the micro entity discount until March 19, 2013.

A certification of micro entity status can be signed only by an authorized party as set forth in 37 C.F.R. 1.33(b), which includes:

  1. A registered patent practitioner, meaning a registered attorney or agent who is either of record or acting in a representative capacity under 37 C.F.R. 1.34;
  2. An inventor who is named as the sole inventor and identified as the applicant; or
  3. All of the joint inventors who are identified as the applicant

For joint inventor applicants, each joint inventor should sign a separate copy of the relevant micro entity certification form. However, if one joint inventor is appointed to prosecute the application on behalf of all the other joint inventors, then only that one joint inventor need sign the micro entity certification form. See USPTO form number AIA/81 titled Power of Attorney To One Or More Of The Joint Inventors And Change Of Correspondence Address available on the USPTO forms webpage at http://www.uspto.gov/forms

Additionally, if any applicant is an assignee or other party under 37 C.F.R. 1.46, and the assignee or other party is a corporation or organization rather than a person, a registered practitioner must sign the certification of micro entity status. An officer of the assignee corporation, for example, is not authorized to sign a certification of micro entity status.

An applicant is not required to provide a certification of micro entity status with each fee payment once micro entity status has been established in an application. The applicant nevertheless must make a determination whether the requirements for micro entity status exist at the time each fee payment is made. If any requirement for micro entity status is no longer met, then the applicant must notify the Office of loss of micro entity status and pay the required fee in the small or undiscounted amount, as approrpriate.

Qualification for micro entity status must be determined at the time any fee is paid at the micro entity discount rate.

As of March 19, 2013, a standard utility patent will cost a micro entity approximately $1145. The micro entity filing, search, and examination fees for a utility applicaiton are $70, $150, and $180, respectively, for a total of $400. Additionally, the micro entity issue and publication fees for a utility application are $445 and $300, respectively, for a total of $745. If a micro entity applicant files a large size application containing an excessive number of claims or extends the time to reply to Office actions, then additional fees will accrue. Further, beginning on January 1, 2014, the micro entity utility applicaiton issue and publication fees will be reduced to $240 and $0, respectively, creating significant additional savings for a micro entity applicant.

Yes, a patentee who qualifies for micro entity status when a maintenance fee is due may pay the maintenance fee in the micro entity amount, provided of course that the required certification of micro entity status is filed together with, or prior to, the maintenance fee payment.

Yes, the USPTO has two micro entity certification forms available on the USPTO forms webpage at http://www.uspto.gov/forms One form is available for micro entity certification under the "gross income" basis set forth in 37 C.F.R 1.29(a), and the other form is available for micro entity certification under the "institution of higher educaiton" basis set forth in 37 C.F.R. 1.29(d).

Under the "gross income" basis, the inventor and the assignee must certify that each meets the gross income limit. Additionally, the inventor must certify that he/she meets the application filing limit.

Under the "institution of higher education" basis, the inventor must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education. Additionally, the assignee must certify that it qualifies as a small entity.

Under the "gross income" basis, the inventor and the assignee must certify that each meets the gross income limit. Additionally, the inventor must certify that he/she meets the application filing limit, and if the assignee is a natural person, then the assignee also must certify that he/she meets the application filing limit.

Under the "institution of higher education" basis, a natural person assignee must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher educaiton; or has assigned, granted, or cnonveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher educaiton. A juristic entity assignee is unlikely to qualify for micro entity status under the "institution of higher education" basis.

Under the "gross income" basis, the inventor and the assignee must certify that each meets the gross income limit. Additionally, the inventor must certify that he/she meets the applicaiton filing limit.

Under the "institution of higher education" basis, the inventor must certify that he/she qualifies as a small entity and either obtains the majority of his/her income from an institution of higher education; or has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to an institution of higher education. Additionally, the assignee must certify that it qualifies as a small entity.

Yes, eligibility for the micro entity discount is determined at the time that a fee is due and not as of the filing date of the application. That is, if an application is due to pay a fee after March 19, 2013 and qualifies as a micro entity, then the applicant may pay micro entity reduced fees, regardless if the application was filed before the micro entity discount became effective on March 19, 2013. To pay micro entity reduced fees, the applicant must file a certification of micro entity status prior to, or at the time, the fees are first paid in the micro entity amount.

No, the application will not qualify for micro entity status because each assignee named as the applicant must meet the § 1.29(d) requirements. Because the institution of higher educaiton cannot qualify under § 1.29(d) (see answer to Question FEE4415), the applicant cannot qualify.

The inventors should be named as the applicant for the micro entity discount to be available. If the university filed as the applicant, the university would not be eligible for the micro entity discount. Under the "gross income" definition, the university likely would not meet the "four previously filed applicatoins" limit. Likewise, under the "institution of higher educaiton" definition, the university itself would not either (i) be an employee of the "institution of higher educaiton" or obtain the majority of its income from such institution; or (ii) be a transferor of ownership rights to such institution. See Question FEE4415.

Yes, if there is more than one inventor named in a patent applicatin as the applicant, each inventor must qualify for micro entity status to pay fees in the micro entity amount. The inventors may qualify for micro entity status individually under either the "gross income" basis or the "institution of higher educaiton" basis.

If the Board of Trustees of the university is listed as the applicant, the Board-applicant would qualify as a micro entity under the "institution of higher educaiton" definition for micro entity status only if the Board-applicant legally separate from the university and is: (1) an employee of the "institution of higher education" that obtains the majority of his or her income from such institution; or (2) a transferor of ownership rights to the "institution of higher education."

No, a researcher at a foreign university is not eligible for micro entity status under the "institution of higher education" definition because the micro entity statute, via incorporation of the Higher Education Act of 1965 for the definition of an "institute of higher education," limits eligible universities to those located in a "state" where a "state" is defined to be one of the states or territories of the United States. See also Questions FEE4405 and FEE4415.

Yes, a researcher at a university located in Puerto Rico or another U.S. territory might be eligible for micro entity status uder the "institute of higher education" definition, if all other requirements are satisfied. An "institute of higher education" is defined by the Higher Education Act of 1965 and that definition is incorporated into the micro entity statute. The Higher Education Act defines an "institution of higher education" as located a "state" where a "state" is further defined to be one of the states or territories of the United States. See also Questions FEE4405 and FEE4415.

No, the "institute of higher education" definition, unlike the "gross income" definition, does not contain any limit on the number of applications for which micro entity reduced fees are paid.

No, the availability of an online education program in a State or territory of the United States does not make a foreign university that sponsors the program an "institution of higher education" for purposes of micro entity eligibility. The Higher Education Act of 1965, which is incorporated into the micro entity statute, defines an "institution of higher education" as being physically located "in any State." See also Question FEE4405.

No, the availability of an online education program in a State or territory of the United States does not make a foreign university that sponsors the program an "institution of higher education" for purposes of micro entity eligibility under the "institute of higher education" basis. The Higher Education Act of 1965, which is incorporated into the micro entity statute, defines an "institution of higher education" as being physically located "in any State."

No, a university-applicant will not qualify as a micro entity under the "institution of higher education" defintion for micro entity status because the applicant must (i) be an employee of the "institution of higher education" and obtain the majority of his or her income from such institution; or (ii) be a transferor of ownership rights to such institution. A university itself would not meet either (i) or (ii). See also Question FEE4415.

Probably no, if a university is listed as an applicant, the university-applicant likely would not qualify as a micro entity under the "institution of higher education" basis for micro entity status because the applicant must (1) be an employee of the "institution of higher education" and obtain the majority of his or her income from such institution; or (2) be a transferor of ownership rights to the "institution of higher educaiton." A university itself would not likely meet either of these conditions.

Section 101(a) of the Higher Education Act of 1965 defines what is meant by "institution of higher education" in the context of 3 C.F.R. 1.29(d). See 20 U.S.C. 1001. Section 101(a) of the Higher Education Act states that the term "institution of higher education" means:

an educational institution in any State that --

  1. admits as regular students only persons having a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate, or persons who meet the requirements of section 1091(d)(3) of this title;
  2. is legally authorized within such State to provide a program of education beyond secondary education
  3. provides an educational program for which the institution awards a bachelor's degree or provides not less than a 2-year program that is acceptable for full credit toward such a degree, or awards a degree that is acceptable for admission to a graduate or professional degree program, subject to review and approval by the Secretary
  4. is a public or other nonprofit institution; and
  5. is accredited by a nationally recognized accrediting agency or association, or if not so accredited, is an instituion that has been granted pre-accreditation status by such an agency or association that has been recognized by the Secretary for the granting of pre-accreditation status, and the Secretary has determined that thre is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time."

Additionaly, section 103 of the Higher Education Act of 1965 provides that the term "STate" means the 50 States of the United States as well as "the Commonwealth of Puerto Rico, the District of Columbia, Guam, American Samoa, the United States Virgin Islands, the Commonwealth of the Northern Mariana Islands, and the Freely Associated States" and that the Freely Associated States means the "Republic of the Marshall Islands, the Federated States of Micronesia, and the Republic of Palau." See 20 U.S.C. 1003.

Based upon these definitions, public or non-profit institutions located in one of the 50 States or U.S. territories offering certain undergraduate educational programs credited toward a bachelor's degree or educational programs awarding "a degree that is acceptable for admission to a graduate or professional degree program" are eligible as an "institution of higher education" for purposes of establishing micro entity status under 37 CFR 1.29(d).

No. An institution such as a non-profit research foundation, technology transfer organization, or Federal Government research laboratory does not qualify as an "institution of higher education" under the definition of "institution of higher education" set forth in the Higher Education Act of 1965 for purposes of establishing micro entity status.

No, the requirements for micro entity status under the "institution of higher education" basis ordinarily would not be met by a university that is itself an assignee-applicant. Under the "institution of higher education" basis, assignee-applicant must certify small entity status as well as that (i) the applicant's employer, from which he/she obtains the majority of his/her income, is an institution of higher education; or (ii) the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher eucation. A university generally will be unable to make either certifications (i) or (ii). That is, a university is unlikely to be the "employee" of certification (i), and the university may be the assignee, but is not likely to be the assignor of the "ownership rights" of certification (ii). Accordingly identifying the university as the applicant, rather than the inventor (e.g., university researcher), normally would preclude eligibility for the micro entity discount under the "institution of higher educaitn" basis.

Yes, assuming the "maximum qualifying gross income" posted on the USPTO website is still above $149,000 on the date of fee payment, the "gross income" limit would be met since each inventor's income is equal to or less than $149,000. But if any one inventor's income exceeds the "maximum qualifying gross income" at the time a fee is paid, then the "gross income" requirement would not be met, and the applicant could not pay any fee due in the micro entity amount.

No, if an application names more than one applicant or inventor, each applicant and each inventor must meet the requirements for micro entity status under the "gross income" basis to file a micro entity certification in the application.

No, the income level requirement under the "gross income" basis for micro entity status applies to each applicant's and inventor's income separately (i.e., the combined gross income of all of the applicants and inventors need not be below the income limit),

An applicant for micro entity status under the "institution of higher education" basis set forth in 37 C.F.R. 1.29(d) must satisfy two requirements. First, the applicant must certify that he/she/it qualifies as a small entity under 37 C.F.R. 1.27. Second, the applicant must certify that either (i) the applicant's employer, from which he/she obtains the majority of his/her income, is an institution of higher education; or (ii) the applicant has assigned, granted, or conveyed a license or other ownership interest in the subject application (or is obligated to do so) to such an institution of higher education.

A PCT application is a single application regardless of the number of countries in which it enters the national stage. A PCT application counts toward the "four previously filed applications" limit only if the basic natioinal fee under 35 U.S.C. 41(a) has been paid. Thus, U.S. national stage applications count in the "four previously filed applications" limit, but foreign national stage applications do not count.

Yes, it is possible for a small entity applicant who does meet the gross income limits set forth in the "gross income" definition for micro entity status at the time the application was filed to meet the gross income limit at time the issue fee is due because of a reduction of income. Assuming the applicant meets the other requirements for micro entity status under the "gross income" definition, the applicant could certify entitlement to micro entity status and pay the isse fee in the micro entity amount.

Yes, the USPTO will publish, and update annually, the prevailing gross income amount on the USPTO website at http://www.uspto.gov/patents/law/micro_entity.jsp.

For purposes of establishing micro entity status under the "gross income" basis, the application filing limit includes: (i) U.S. nonprovisional applications (e.g., utility, design, continuation, and divisional applications), (ii) U.S. reissue applications, and (iii) U.S. national stage applications under the Patent Cooperation Treaty (PCT). It does not matter whether the applications are pending, patented, or abandoned; they are still included when counting to determine whether the application filing limit has been reached.

The application filing limit does not include: (i) foreign applications; (ii) international (PCT) applications for which the basic U.S. national stage filing fee was not paid; and (iii) provisional applications. In addition, the application filing limit does not include applications where an applicant, inventor, or joint inventor has assigned, or is under an obligation by contract or law to assign, all ownership rights in the application as the result of the applicant's, inventor's, or joint inventor's previous employment.

Yes, plant applications are counted toward the "four previously filed applications" limit.

The USPTO will post the gross income limit on the USPTO website. The gross income limit will be referred to as the "maximum qualifying gross income." Effective September 17, 2013, the maximum qualifying gross income is $153,051.

For purposes of qualifying for micro entity status on the "gross income" basis, an applicant, inventor, or joint inventor cannot have a gross income during the calendar year when a fee is paid exceeding three times the median household income for the preceding calendar year, as reported on the USPTO website. What constitutes "gross income" for this context is defined by section 61(a) of the Internal Revenue Code of 1986. See 27 U.S.C. 61(a).

Notably, the gross income limit may change each calendar year. Therefore, if the prosecution of an application extends across multiple calendar years, an applicant, inventor, and joint inventor must verify that the gross income limit for the requisite calendar year is met to maintain eligibility for the micro entity discount. If the gross income limit is not met, then a notification of loss of entitlement to micro entity status must be filed in the application to remove micro entity status.

Regardless whether an applicant, inventor, or joint inventor filed a joint tax return rather than a separate tax return in the preceding calendar year, the "gross income" limit applies to the amount of income the person would have reported as gross income if that person filed a separate tax return, which includes, for example, properly accounting for that person's portion of interest, dividends, and capital gains from joint bank or brokerage accounts.

No, if an applicant assigns, grants, conveys, or licenses any rights in an application to a party that does not qualify as a small entity under 37 CFR 1.27, then the applicant cannot qualify for any patent fee discount as either a micro entity or a small entity. In order to qualify for micro entity status, no party can hold rights or obligated rights in an application that does not qualify at least as a small entity.

Yes, micro entity status is available for both AIA and pre-AIA applications. A micro entity certification may be filed in a pending AIA or pre-AIA application at any time during prosecution and in a patent issued under the AIA or pre-AIA law prior to, or concurrent with, a maintenance fee payment.

An applicant for micro entity status under the "gross income" basis set forth in 37 C.F.R. 1.29(a) must satisfy four requirements. First, the applicant must certify that he/she/it qualifies as a smallentity under 37 CFR 1.27. Second, the applicant must certify that neither the applicant nor the inventor nor a joint inventor has been named as an inventor on more than four preivously filed patent applications. Third, the applicant must certify that neither he applicant nor the inventor nor a joint inventor had a gross income exceeding three times the median household income for the preceding calendar year, as most recently reported by the Bureau of the Census. Lastly, the applicant must certify that neither the applicant nor the inventornor a joint inventor has assigned, granted, or conveyed a license or other ownership interest (and is not obligated to do so) in the subject application to an entity that had a gross income in the preceding calendar year in excess of the gross income limit.

No. The AIA does not permit the USPTO to apply the 75% micro entity fee discount until the micro entity fee for a specific item is set or adjust using the fee setting authority provided in section 10 of the act.

The micro entity discount becomes available on March 19, 2013. The micro entity discount gives a 75% reduction in fees associated with filing, searching, examing, issuing, appealing, and maintaining patent applications and patents.

To qualify as a micro entity, an applicant must meet either of two sets of conditions. As a first option, an applicant can establish a limited income and limited experience with the patent application filings. See 37 C.F.R. 1.29(a). As a second option, an applicant can establish employment by, or an assignment or obligation to assign to, an institution of higher education. Under either option, an application also must satisfy the requirements for small entity status. See 37 C.F.R. 1.29(d).

The applicable fee amount is the amount in effect on the day the fee is paid. If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees. Applicants are encouraged to provide authorizatioin in the application file to change fees to a specified Deposit Account to avoid insufficient payment of fees.

No. GIven the timing of the enactment of the AIA so close to the beginning of fiscal year 2012, the USPTO does not plan on implementing the CPI for fiscal year 2012.

Yes, the USPTO collected and was able to spend almost $5 million more in patent fees during FY 2011 related to the 15% fee increase and the prioritized examination fee. However, the timing of enactment of the AIA led to an unfortunate rush on fee payments during the 10 days from AIA enactment (September 16, 2011) to the fee increase effective date (September 26, 2011). Prior to enactment of the AIA, the USPTO estimated taht it would collect approximately $70 to $80 illion more than the $2.090 billion it was authorized to spend. The rush on fee payments triggered an additional $139 million in FY 2011 fee collections above the $2.090 billion authorized level. The total $209 million in fees above the USPTO's FY 2011 appropriation are not available for the USPTO to spend on operations. The USPTO estimates that about half of these unavailable fees are collections that other wise would have been recieved in FY 2012.

Consult the current fee schedule available at http://www.uspto.govabout/offices/cfo/finance/fees.jsp for the correct fee amounts. The fees required to be paid upon filing for prioritized examination are:

  1. Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant applicatoin, 37 CFR1.16(c)
  2. Search fee, as set forth in 37 CFR 1.16(k), or for a plant aplication, 37 CFR 1.16(m)
  3. Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).
  4. Publication fee, as set forth in 37 CFR 1.18(d)
  5. Track I processing fee, as set forth in 37 CFR 1.17(i).
  6. Track I prioritized examination fee of $4800.00 ($2400.00 for small entities)
  7. If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s)
  8. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, asset forth in 37 CFR 1.16(h).
  9. If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i)

If any fee is unpaid at the time of filling of the application, the request for Piroritized Examination will be dismissed. However, if an explicit authorization to change any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

The 15% increase in fee rates will become effective at 12:00 a.m. on Monday, September 26, 2011.

The specific fees that will be increased by 15% are listed in the table here. The entire updated fee schedule can be found at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp.

Yes. Fees such as international stage PCT fees, certain petition fees, enrollment fees, and service fees will not be increasing by 15%.

The new fee for prioritized examination will be effective at 12:00 a.m. on Monday, September 26, 2011. The fee rates for large and small entities are listed below. Like all fees, the USPTO is not authorized to apply a micro entity discount to the prioritized exam fee without setting the fee using the section 10 fee setting process.

CFR Section Fee Code Description 9/26/2011 Fee
(i.e., post-AIA enactment)
1.17(c) 1817 Request for Prioritized Examination $4,800.00
1.17(c) 2817 Request for Prioritized Examination $2,400.00

America Invents Act (AIA) - Fees - Patent Help - Other

Yes, for any re-submission, a third party must pay the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documnts). In this instance, a fee of $180 would be required for the re-submission of the five documents.

Yes, a third party must pay the $180 fee to make a re-submission of three or fewer documents in an application where the third party's first submission of three or fewer documents in the application took advantage of the fee exemption and was found to be non-compliant. The fee exemption does not apply to a resubmission because the third party will not be able to make the "first and only" statement under 37 C.F.R. 1.290(g).

America Invents Act (AIA) - First Inventor to File - Other

An applicant should file a statement in an AIA FITF transition application as soon as applicant becomes aware that the statement is needed in order to make sure that the application will be examined under the appropriate FITF statutory framework. 

An applicant may file, prior to payment of the issue fee, a late statement that was unintentionally not timely filed, without filing a petition.  If the late statement is being filed on or after the date of payment of the issue fee, applicant must withdraw the application from issue, 37 CFR 1.313, and file an RCE in order for the late statement to be considered, and the application to then be examined under the correct statutory framework.

As with any FITF applicability statement submitted after the filing of the application, an Application Data Sheet (ADS), 37 CFR 1.76, should not be used to make the statement as this would cause delay in processing the statement.  Instead, the late statement should be submitted as a separate paper and identified with the document description “Make/Rescind statement under 37 CFR 1.55/1.78,” and the document code “R.55.78.STMT” when filing the statement via Patent Center.

The acknowledgement of a statement by the USPTO on a filing receipt does not automatically mean that the application was examined under the appropriate FITF statutory framework.  Applicant should check the AIA (FITF) status information that is shown on the latest Office action, in Patent Center to determine under what statutory framework the application was examined.

A U.S. patent, a published U.S. application, or a published PCT application designating the United States is available as prior art on the date that the U.S. patent or published application is “effectively filed.”  The date that a U.S. patent or U.S. or PCT published application is “effectively filed” is the earlier of:  (i) the actual filing date of the U.S. patent or U.S. or PCT published application; or (ii) the filing date of the earliest application to which the U.S. patent or U.S. or PCT published application is entitled to claim a right of foreign priority or domestic benefit, and which describes the subject matter.

Non-English language documents being relied upon in a rejection must be translated if a translation is necessary for the record to be clear as to the facts relied upon to support the examiner’s rejection. See MPEP § 706.02 (section II) and Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 11063 (Feb. 14, 2013) (response to comment 14). This is a case-by-case determination.

Under 35 U.S.C. 374,  the WIPO publication of a PCT application designating the United States shall be “deemed” a publication under 35 U.S.C. 122(b).  The term “deemed published” in AIA 35 U.S.C. 102(a)(2) encompasses WIPO published PCT applications that are “deemed” a publication under 35 U.S.C. 122(b) by virtue of 35 U.S.C. 374. 

As long as the PCT application designates the United States, there is no requirement under the AIA that the PCT application be published in English in order for the published PCT application to be applied as of its effectively filed date under 35 U.S.C. 102(a)(2). For PCT applications filed on or after January 1, 2004, the filing of a PCT application will automatically constitute the designation of all contracting countries to the PCT, unless the applicant specifically chooses not to designate a particular contracting country.  See MPEP § 1801.  In addition, there is no critical date under the AIA with regard to the international filing date for the WIPO published PCT application to be available as prior art under 35 U.S.C. 102(a)(2).

The effectively filed date of any subject matter disclosed in a published PCT application that designates the United States is the earlier of:

  1. the actual filing date o the PCT application or
  2. the filing date of the earliest application to which the PCT application is entitled to claim a right of foreign priority or domestic benefit which describes the subject matter.

The effective filing date of the nonprovisional application is March 1, 2013.  The filing date of the foreign priority application is not the effective filing date for an invention claimed in a pre-AIA (FTI) application, but the foreign priority date may be used to overcome certain prior art (e.g., pre-AIA 35 U.S.C. 102 (a)).

The effective filing date of a claimed invention in the nonprovisional application is March 17, 2013, only if the claimed invention is fully supported by the foreign priority application.  The filing date of the foreign priority application can be the effective filing date for an invention claimed in an AIA (FITF) application if the subject matter of the claim is fully supported in the foreign priority application.

The filing date of an application, rather than the revival date of an application, determines whether the application is examined under AIA (FITF) or pre-AIA (FTI) law.  The application was filed before March 16, 2013, and thus remains a pre-AIA (FTI) application.  Here, the revived application is examined under pre-AIA (FTI) law because the application was filed before March 16, 2013.  The first-inventor-to-file provisions of the AIA do not apply to applications filed before March 16, 2013.

Whether an application filed on or after March 16, 2013 is an AIA (FITF) or a pre-AIA (FTI) application is determined by the effective filing date (as defined in 35 U.S.C. 100(i)) of the claimed invention.

Yes, any foreign priority or domestic benefit claim must be filed within four months of the actual filing date of the application or sixteen months of the filing date of the application for which priority or benefit is claimed.  (However, this time limit does not apply to applications filed before November 29, 2000, or to design applications.)  An applicant may submit a priority or benefit claim outside this time period via petition if the delay in submitting the priority or benefit claim was unintentional.  Additionally, to perfect a foreign priority claim, an applicant must provide a certified copy of the foreign application before a patent is granted, and must provide a certified copy or interim copy of the foreign application within four months of the actual filing date of the application or within sixteen months from the filing date of the prior foreign application. 

Provided that the relevant subject matter is described in the priority document, a U.S. patent, U.S. patent application publication, or WIPO published PCT application is prior art as of its earliest priority date, regardless of whether the applicant perfected the right to priority in that patent or application.  A copy (certified or interim) of any priority application should be in the file of any patent or patent application publication.  However, should the examiner need a copy where it is not present the examiner may consult with the Scientific and Technical Information Center (STIC) in order to obtain a copy.

For an application filed on or after March 16, 2013 that discloses and claims only subject matter also disclosed in a previously filed pre-AIA (FTI) application to which the application is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim that is directed to new matter would not convert the application into an AIA (FITF) application.  Introduction of new matter is prohibited by 35 U.S.C. 132(a).  Thus the application may not actually “contain” a claim to a claimed invention that is directed to new matter.  The MPEP sets forth the following process for treating amendments that are believed to introduce new matter:  (1) a new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02); and (2) amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04).  This process in the MPEP for treating amendments containing new matter, however, is purely an administrative process for handling an amendment seeking to introduce new matter in violation of 35 U.S.C. 132(a) and resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter. See Changes to Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11024, 11043 (Feb. 14, 2013) (response to comment 24).

The AIA did not change the requirements for claiming the benefit of a prior-filed U.S. application under 35 U.S.C. 120, except that the prior-filed U.S. application need not satisfy the “best mode” requirement of 35 U.S.C. 112(a).

For an application filed on or after March 16, 2013, the effective filing date of a claimed invention is the earlier of:  (1) the actual filing date of the patent or the application for patent containing the claimed invention; or (2) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority or the benefit of an earlier filing date under 35 U.S.C. 119, 120, 121, or 365. See Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 11073 (Feb. 14, 2013).  A priority or benefit application must provide support under 35 U.S.C. 112(a) for a claimed invention for the application to be entitled, as to that claimed invention, to a right of priority or the benefit of the filing date of that priority or benefit application date under 35 U.S.C. 119, 120, 121, or 365.

No, the date of the invention is irrelevant under the AIA.

A U.S. patent, a U.S. patent application publication, or a WIPO published application naming B alone would be prior art under 35 U.S.C. 102(a)(2) with respect to an application naming A and B as joint inventors.  Nevertheless, 35 U.S.C. 102(b)(2) provides an exception to 35 U.S.C. 102(a)(2) where the subject matter disclosed in a prior art reference was obtained directly or indirectly from the inventor or a joint inventor.  In this situation, from the naming of B alone on the U.S. patent, a U.S. patent application publication, or a WIPO published application the USPTO considers that the subject matter disclosed in the U.S. patent, a U.S. patent application publication, or a WIPO published application was obtained from a joint inventor (B) and therefore is not prior art.  A U.S. patent, a U.S. patent application publication, or a WIPO published application naming A, B, and C, also would be prior art under 35 U.S.C. 102(a)(2) unless the applicant shows (by way of an affidavit or declaration under 37 CFR 1.130(a)) that the subject matter in the U.S. patent, a U.S. patent application publication, or a WIPO published application being relied upon was obtained from A and/or B.  In that case, the exception under 35 U.S.C. 102(b)(2)(A) would apply.

Unpublished applications per se are not prior art under AIA 35 U.S.C. 102(a)(2).  An application must be issued as a U.S. patent or published as a U.S. patent application publication or WIPO published PCT application to be prior art under AIA 35 U.S.C. 102(a)(2).

Yes, provided that the subject matter being relied upon is described in the provisional application or foreign application for which priority or a benefit is claimed by the U.S. patent, U.S. patent application publication, or WIPO published PCT application being used as prior art under 35 U.S.C. 102(a)(2).

Yes, a PCT application must designate the United States to have a prior art effect under 35 U.S.C. 102(a)(2).  However, PCT applications filed after a change to the PCT Regulations as of January 1, 2004 automatically designate all contracting countries, including the United States, unless the applicant specifically chooses not to designate a particular contracting country.

A provisional rejection under 35 U.S.C. 102(a)(2) is appropriate only if the applications have at least one inventor in common or have a common assignee.  See MPEP 706.02(f)(2) (provides for provisional rejections on the basis of a copending unpublished application if the applications have at least one inventor in common or have a common assignee).

No, provisional applications cannot qualify as prior art under 35 U.S.C. 102(a)(2) because they are not publicly available.  Provisional applications are not published and are retained in confidence, unless their benefit is claimed in an application that has been published or patented.  However, a U.S. patent, U.S. patent application publication, or WIPO published PCT application designating the United States that claims the benefit of a provisional application is prior art under 35 U.S.C. 102(a)(2) as of the filing date of the provisional application with respect to the subject matter described in the provisional application.

Yes.  The first-to-invent provisions apply to applications filed before March 16, 2013.

The term “PCT application” as used in the guidelines and training materials covers all PCT applications regardless of whether the PCT application enters the national stage in the United States under 35 U.S.C. 371.  A PCT application that designates the United States is not required to enter the national stage in the United States under 35 U.S.C. 371 for the WIPO publication of the PCT application to have a prior art effect under 35 U.S.C. 102(a)(2). 

The "effective filing date" is relevant in the application under examination, and means the earliest date to which the claims under examination are entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365. The "effectively filed" date is relevant in a U.S. patent, U.S. patent application publication, or WIPO published PCT application being considered as prior art, and means the earliest foreign or domestic application to which a U.S. patent, U.S. patent application publication, or WIPO published PCT application claims priority or benefit under 35 U.S.C. 119, 120, 121, or 365 that describes the subject matter being relied upon in a prior art rejection where the prior art qualifies under 35 U.S.C. 102(a)(2).

The AIA has not changed current practice for determining priority (the effective filing date) for different claims within a claim set. The effective filing date is determined on a claim-by-claim, and not on an application basis (i.e., a claimed invention, and not an application, has an effective filing date). Some claims in an application may be supported by a priority document having one filing date, and other claims in the application may be supported by a different priority document having a different filing date or may not be supported by any priority/benefit document.

Pre-AIA 35 U.S.C. 102(c), (d), and (f) are applicable only to pre-AIA (FTI) applicatoins. Pre-AIA 35 U.S.C. 102(g) applies to pre-AIA (FTI) applications as well as any AIA (FITF) application that contains or ever contained a claimed invention having an effective filing date that is before March 16, 2013.

The AIA does not change the current policy discussed in MPEP § 2129 with respect to the use of applicant's admissions as prior art. A statement by an applicant in the specification or made during prosecution identifying the work of another as "prior art" is an admission that can be relied upon for both anticipation and obviousness determinations. See Examination Guidelines for Implementing the FIrst Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 1164, 11075 (Feb. 14, 2013) (response to comment 20 and "Admissions").

Yes, examiners use "The Wayback machine" as a source of information to determine when a Web reference was first made available to the public.

The "effective filing date" of a claimed invention is defined to be the earlier of: (i) the actual filing date of a nonprovisional application; or (ii) the date of the earliest application to which the nonprovisional application is entitled to a right of foreign priority or domestic benefit as to such claimed invention. For example, the effective filing date could be filing date of (i) an earlier-filed nonprovisional application or international application designating the United States (benefit under 35 U.S.C. 120,121, or 365(c)); (ii) a provisional application (benefit under 35 U.S.C. 119(e)); or (iii) a foreign application (priority under 35 U.S.C. 119(a)-(d) or 365(a) or (b)).

No, the AIA (FITF) law will not affect any application filed before March 16, 2013.

Non-English language foreign patent documents or non-patent literature being relied upon in a rejection must be translated if necessary for the record to be clear as to the facts relied upon to support the rejection. See MPEP § 706.02 (section II) and Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11059, 11063 (Feb. 14, 2013) response to comment 14).

If an application is a pre-AIA (FTI) application, examiners will continue to make prior art rejections (if appropriate) on the basis of publicatoins and activities that qualify as prior art under pre-AIA 35 U.S.C. 102(a), 102(b), 102(e), 102(f) and 102(g). By contrast, if the application is an AIA (FITF) application, examiners will make prior art rejections (if appropriate) on the basis of publicatoins and activities that qualify as prior art under 35 U.S.C. 102(a)(1) or 102(a)(2).

No, examiners will not make rejections under pre-AIA 35 U.S.C. 102(e) in AIA (FITF) applications. However, 35 U.S.C. 102(a)(2) is a "counterpart" of pre-AIA 35 U.S.C. 102(e) and provides for rejections on the basis of U.S. patents, U.S. patent applicaton publications, or WIPO published PCT applications that designate the United States, that contain subject matter that was effectively filed before the effective filing date of the claims in the application under examination.

The effective date for the first inventor-to-file provisions is March 16, 2013.

No, the applicability of the America Invents Act first-inventor-to-file law ("AIA (FITF)") or pre-America Invents Act first-to-invent ("pre-AIA (FTI)") law depends on the effective filing date of a claimed invention as defined in 35 U.S.C. 100(i) and not on an arbitrarily selected cut-off date.

America Invents Act (AIA) - Inter Partes Review - Other

Where another matter involving the same patent is before the Office during the pendency of the inter partes review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

The AIA permits the parties to an inter partes review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of an inter partes review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

The Board does not currently track the percentage of IPRs that identify concurrent litigation.

The AIA provides that where an inter partes review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the inter partes review.

Yes, a petitioner in an inter partes review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the inter partes review. Similarly, a petitioner in an inter partes review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the inter partes review.

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

Yes, a party dissatisfied with the final written decision in an inter partes review may appeal to the Federal Circuit.

The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Yes, the AIA permits either party to a inter partes review to request an oral hearing.

An inter partes review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

Prosecution bars sometimes arise in IPRs as a result of a protective order entered in concurrent district court litigation. The enforcement of such bars, including whether particular activities are covered, is left to the district court that entered the order. The Patent Trial Practice Guide provides that counsel for a party who receives confidential information in a proceeding will not be restricted by the Board from representing that party in any other proceeding or matter before the Office. See 77 Fed. Reg. 48756, 48771, para. (h) (Aug. 14, 2012).

The AIA authorizes the Office to set standards and procedures for the taking of discovery during an inter partes review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice.

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

The "interests-of-justice" standard is discussed in the "umbrella" Rules of Practice for Trials Before the Patent Trial and Appeal Board, appearing at 77 Fed. Reg. 48612, 48622 (Aug. 14, 2012). The Board's decision in IPR2012-00001, Paper No. 26, also provides guidance on the factors to consider when moving for additional discovery. This decision is available in the Representative Orders, Decisions, and Notices section of the Board's web site (http://www.uspto.gov/ip/boards/bpai/representative_orders_and_opinions.jsp).

Yes, a patent owner may file a response after the institution of an inter partes review.

A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.

Yes, a petitioner may supplement information provided in the petition for inter partes review by filing motion within one month of the date trial is instituted.

The AIA provides that the file of an inter partes review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of confidential information.

For an IPR, the applicable statute is 35 U.S.C. § 315(b), which states that an IPR may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party-in-interest, or privy of the petitioner is served with a complaint alleging infringement of the patent. The statute is clear that the bar is with respect to "the patent" and not specific claims of the patent. The bar does not apply to a request for joinder under subsection (c) of 35 U.S.C. 315.

The petitioner must demonstrate that there is a reasonable likelihood that he/she would prevail as to at least one of the claims challenged to trigger an inter partes review. The Patent Trial and Appeal Board will decide petitions for inter partes review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office.

Yes, a party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

No, a party is statutorily precluded from appealing the Board's decision whether to institute an inter partes review.

The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. For petitions filed prior to March 19, 2013, the fee for filing a petition challenging the patentability of up to 20 claims is $27,200. For each additional claim challenged, there is a fee of $600.00. For petitions filed on or after March 19, 2013, the request fee is $9,000 plus a fee of $200.00 for each claim over 20, and the post-institution fee is $14,000 plus a fee of $400.00 for each claim over 15.

To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.

In a petition for an inter partes review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.

Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.

All patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-invent provisions in current Title 35.

A petitioner for inter partes review may request to cancel as unpatentable one or more claims of a patent 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.

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for an inter partes review of the patent.

A petition for inter partes review cannot be filed until after the later of:
(i) 9 months after the grant of a patent or
(ii) the date of termination of any post-grant review of the patent.

The effective date for the inter partes review provision in the AIA is September 16, 2012.

America Invents Act (AIA) - Inventor's Oath or Declaration - Other

The inventor should file a request to change the inventor name under amended 37 C.F.R. 1.48(f), since the inventor seeks to correct her name after September 16, 2012.

The inventor's oath/ declaration filed in the reissue proceeding need not contain a statement that the error(s) being corrected occurred without deceptive intention, and a supplemental oath or declaration is no longer required due to the filing of an amendment.

Yes, a request for prioritized examination for an application filed after September 16, 2012, must be accompanied by an inventor's oath or declaration executed by or with respect to each named inventor. In other words, an inventor's oath or declaration cannot be postponed until the Office issues a Notice of Allowability for applications subject to prioritized examination (Track I).

An inventor is not required to re-execute a new inventor's oath or declaration provided that the changes are minor, for example, correction of typographical errors, grammatical problems, and clarifying sentences. 37 CFR 1.52(c). If the changes would amount to the introduction of new matter had the change been made to a filed application, however, then the inventor should execute a new oath or declaration after reviewing the amended application. The amended rules permit alterations to the specification without the inventor re-executing an oath or declaration only where the statements in the executed declaration remain applicable. Additionally, an inventor must before executing the oath or declaration (i) review and understand the contents of the application; and (ii) be aware of his or her duty of disclosure. 37 CFR 1.63(c). If the changes made to the specification before an application is filed result in substantial alterations to the application, then an inventor may not understand the contents of the application or be aware of his/her duty to disclose information relating to the substantial alteration.

The AIA does not change the standard for an inventor's refusal to execute a declaration. An initial refusal to sign based on some precondition may or may not amount to an outright refusal, depending on the specific facts.

Yes, the inventor's oath/declaration provision permits the Office to issue a Notice of Allowance in an application only if: (i) the inventor's oath/declaration is filed; (ii) a substitute statement filed in lieu of the inventor's oath/declaration; or (iii) an assignment containing the statements required for an inventor's oath/declaration is recorded in the Office for the patent application.

An applicant (i) may submit the inventor's oath/declaration on filing of the application; or (ii) may postpone until the Office issues a Notice of Allowability, provided that the applicant files a signed Application Data Sheet identifying the inventive entity.

Yes, if an inventor customarily receives mail at a corporate mail address, then the inventor may provide that address for his mailing address.

Yes, the inventor's oath declaration provision permits a substitute statement to be filed in an application when the inventor is: (i) deceased; (ii) legally incapacitated; (iii) unable to be found or reached after diligent effort; or (iv) refuses to sign an oath/declaration.

The following applicant entities may sign a substitute statement on behalf of an inventor when such a statement is permitted in a patent application:

(i) the inventor's legal representative under 37 CFR 1.43, where the inventor is deceased or legally incapacitated;

(ii) the other joint inventors under 37 CFR 1.45, where the inventor refuses to sign the declaration or cannot be reached or located after diligent effort;

(iii) the assignee or party to whom the inventor is under an obligation to assign under 37 CFR 1.46, where the inventor is deceased, legally incapacitated, refuses to sign the declaration or cannot be reached or located after diligent effort; or

(iv) a party who otherwise shows a sufficient proprietary interest in the claimed invention under 37 CFR 1.46(b), where the inventor is deceased, legally incapacitated, refuses to sign the declaration or cannot be reached or located after diligent effort.

Yes, where an assignee executes a substitute statement, the assignee must supply his/her residence and mailing address. If the assignee is a juristic entity, the residence and mailing address of the juristic entity should be used.

An applicant may sign and file a substitute statement (AIA/02 or equivalent) where an inventor refuses to sign a declaration, cannot be reached or located after diligent effort, is legally incapacitated, or is deceased. Proof of the circumstances (e.g., attempts to contact the inventor) is no longer required, but such information should be retained in an applicant's records.

No, an assignee who is not an applicant must become the applicant under 37 C.F.R. 1.46(c) in order to revoke or appoint power of attorney.

No, the assignee-applicant would not need to file a new power of attorney so long as the power of attorney granted by the inventor-applicant remained. A new power of attorney from the assignee-applicant would need to be filed only if the power of attorney from the inventor was revoked.

Yes, the application number is required to be identified only where the paper is being submitted for a previously-filed application for a patent. The application information fields on the PTO/AIA/82A should be completed to the extent possible to clearly identify the application to which the form is being directed.

No, assignees and obligated assignees who are named as the applicant in the ADS (e.g., on filing) may give power of attorney without resort to 37 CFR 3.71 and 3.73. PTO form AIA/82 should be used to give the power of attorney.

The assignee and the second inventor should be listed in the "Applicant Information" section of the ADS as the applicant.

Yes, assignee information can be included on the patent application publication even where the assignee is not the applicant. The current ADS form, PTO/AIA/14, does not have a field for providing non-applicant assignee information. The Office is in the process of revising the ADS form to provide an additional field for non-applicant assignee information for assignees who are not the applicant, but who want assignee information printed on the patent application publication. Until the revised ADS form is available, non-applicant assignee information may be provided on the application transmittal letter for the purpose of having the information printed on the patent application publication.

The petition under 37 CFR 1.46(b)(2) should be filed with the application. If the petition is not filed with the application, then the person who is alleging sufficient proprietary interest may not be considered the applicant. Instead, where no applicant is identified, the Office will, by default, consider the inventor to be the applicant (e.g., to complete processing of the application so it can be forwarded for examination). 37 CFR 1.46(c) provides that a request to change the applicant after an original applicant has been specified requires compliance with 37 CFR 3.71 and 3.73. A person alleging sufficient proprietary interest who later wants to become the applicant would not be able to comply with 37 CFR 3.71 and 3.73. In addition, any power of attorney must be signed by the applicant. If a petition has not been filed, then a person who allegedly has sufficient proprietary interest would not be able to sign a power of attorney.

For an application filed on or after September 16, 2012, a power of attorney must be signed by the applicant. A "patent owner" may sign a power of attorney when a patent has issued, such as for a reissue application, reexamination proceeding, or a supplemental examination proceeding.

Yes, an applicant can use the declaration filed in the parent application if that declaration complies with new 35 U.S.C. 115 and a signed Application Data Sheet (ADS) is filed in the CIP application (either before or with the copy of the parent declaration) naming the inventive entity (X and Y). An oath or declaration signed by the additional inventor Y in the CIP application would also be required. But as long as a signed ADS was filed naming the inventive entity (X and Y) in the CIP application, the oath or declaration executed by the additional inventor Y in the CIP application would not need to identify inventor X.

A patent practitioner must sign the application data sheet for an assignee-applicant that is a juristic entity.

A juristic entity may sign substitute statements, small entity assertions, terminal disclaimers, powers of attorney, and submissions under 37 CFR 3.73(c) for an assignee to establish ownership of patent property if the assignee is not the original applicant.

Once the assignee is misidentified as the applicant, a request to correct or update the name of the applicant would need to be accompanied by a new ADS and a statement under 37 C.F.R 3.73 that shows ownership by the inventors.

The Office has made a variety of new forms related to the inventor's oath/declaration provision available on the Office's AIA microsite as well as on the Office's form site, including an inventor declaration for an original (non-reissue) application, inventor declaration for a reissue application, substitute statement, and Application Data Sheet (ADS).

No. There is new statutorily-mandated language that must be included in the inventor oath/declaration after September 16, 2012, that is not included on the inventor oath/declaration form available before that date. The new statutorily mandated language includes: (1) a statement that "the application was made or authorized to be made by the affiant or declarant," and (2) the acknowledgement of penalties clause must refer to "imprisonment of not more than 5 years." The Office has made a new oath/declaration form containing the necessary statutorily-mandated language available on the Office's AIA microsite as well as on the Office's form site.

The Office has listed the date of execution on PTO/AIA/01 as optional because the Office does not check the date of execution and will not require a newly executed oath or declaration where the date of execution has been omitted. If an applicant prefers, he/she is welcome to include the date of execution.

An inventor must state in his/her oath/declaration that (i) he/she is an original inventor of the claimed invention; and (ii) he/she authorized the filing of the patent application for the claimed invention. An inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship.

Yes, the changes to inventor's oaths or declarations introduced by the AIA apply to plant, design, and reissue applications as these are applications considered to fall under 35 U.S.C. 111(a).

No, an inventor's oath or declaration for an application filed on or after September 16, 2012, is subject to the requirements of 35 U.S.C. 115 as amended by the AIA and does not need to state that the inventor is the "first" inventor, even though the application may be subject to the first-to-invent provisions of 35 U.S.C. 102 that the inventor be the "first" inventor.

Where an applicant files a bypass application on or after September 16, 2012, the applicant must submit an inventor's oath or declaration that complies with the AIA.

Yes, the inventors may execute new declarations compliant with pre-AIA and post-AIA requirements and submit them for use in any subsequent continuing applications if filed.

Yes, the inventor's declaration is not subject to the AIA rule changes because the application was filed before the inventor's oath or declaration provision of the AIA became effective on September 16, 2012.

No, the inventor's declaration is not subject to the AIA rule changes. The submission of a national stage application is not the filing of an application but instead relates to entry of the international application into the national stage. The filing date of a national stage application is the filing date of the international application. See MPEP § 1893.03(b).

Probably not. To re-submit an inventor's declaration from the parent application in the child application, the declaration from the parent application must comply with the requirements of 35 U.S.C. 115 as amended by the AIA. Specifically, the inventor's declaration must state that the inventor (i) is an original inventor of the claimed invention; and (ii) authorized the filing of the patent application for the claimed invention. The inventor's declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of title 18 by fine or imprisonment of not more than 5 years, or both. It is unlikely that the declaration from the parent application contains these statements since they were not required by pre-AIA law.

Yes, an inventor is under a duty of disclosure to the Office under 37 CFR 1.56 for all filings made at the Office, even though an inventor is not required under 35 U.S.C. 115 as amended by the AIA to acknowledge that duty of disclosure in writing in an inventor's oath or declaration. Because of the inventor's duty of disclosure, it is appropriate to have the inventor review a CIP application containing new matter before the CIP application is filed at the Office, even though the inventor need not execute a new oath or declaration.

To change inventorship, an applicant must file a request under 37 CFR 1.48(a), an application data sheet listing the correct inventors, and a $130 fee. Additionally, the applicant must submit an inventor's oath or declaration for each added inventor.

The effective date for the inventor's oath/declaration provision in the AIA is September 16, 2012.

Yes, 37 CFR 1.46(b) relating to assignee-applicants refers to 35 U.S.C. 111 broadly thereby covering 35 U.S.C. 111(b) provisional applications.

Yes, an assignment may include the statements required in an oath/declaration. In such case, the applicant may file a combined inventor's oath/declaration and assignment document in the Office.

No, the Office does not plan to provide an assignment form that may also be used to meet the inventor's oath or declaration requirement because assignments are a matter of local law. If an applicant wants to file a combination assignment-statement, the Office suggests that the applicant re-draft his/her normally-used assignment to meet the requirements of new 37 CFR 1.63, including the required statements in 35 U.S.C. 115 as amended by the AIA. For ease of reference, the required statements are set forth in the USPTO declaration forms PTO/AIA/01 ("Declaration (37 CFR 1.63) For Utility or Design Application Using an Application Data Sheet (37 CFR 1.76)") and the PTO/AIA/08 ("Declaration for Utility or Design Patent Application (37 CFR 1.63)"). The declaration forms for Plant Applications are USPTO forms PTO/AIA/03 and PTO/AIA/09. Additionally, where an applicant considers merely attaching declaration page(s) to the end of the assignment document, the applicant should ensure that any signature is applicable to both the declaration pages and the assignment.

No, the Office has no preference as to the type of inventor's oath or declaration to be filed for an application. The Office considers that the public interest is best served where an assignment, if one exists, is publicly recorded.

Yes, for applications filed on or after September 16, 2012, a domestic benefit claim(s) must be made in an ADS within four months from filing or sixteen months from the filing date of the prior-filed application, whichever is later. If a corrected ADS containing a domestic benefit claim(s) is presented outside of the four/sixteen month time period, then a petition to add an unintentionally delayed domestic benefit claim and fee must be filed to add the claim(s).

Yes, an ADS that is provided to correct or update information (relative to the information submitted in a previously submitted ADS) must identify the information that is being changed via underlining for insertions and strike-through or brackets for text removed.

Yes, the assignee can be the applicant. However, the inventor must still execute an oath/declaration. The assignee may only execute a substitute statement in lieu of an oath/declaration where the inventor refuses to execute an oath/ declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated.

For an application filed on or after September 16, 2012 with an assignee as the applicant, the assignee-applicant must file an application data sheet identifying the assignee as the applicant. Additionally, the assignee-applicant must submit an executed inventor's oath or declaration no later than in response to a Notice of Allowability. For the inventor's oath or declaration, a copy of the oath or declaration from a prior application in the benefit chain may be used in the CIP application only where the prior declaration is compliant with 35 U.S.C. 115 as amended by the AIA. If the oath or declaration from a prior application in the benefit chain is not compliant with 35 U.S.C. 115 as amended by the AIA, then the inventor must execute a new oath or declaration that satisfies the AIA requirements.

Submission of an application data sheet (ADS) should be routine for all applications but is required where: (i) submission of the inventor's oath or declaration is to be delayed; (ii) each inventor's oath or declaration identifies only the inventor (or person) executing that particular oath or declaration and not all of the inventors; (iii) there is a claim for domestic benefit (37 CFR 1.78), or foreign priority claim (37 CFR 1.55)(except foreign priority for national stage applications); or (iv) there is an identification of applicants other than the inventors under 37 CFR 1.46 (except for national stage applications, where the applicant is the person identified in the international stage).

No, although an ADS submitted with an application is part of the application, the use of an ADS to make a claim for domestic benefit or foreign priority is not an express incorporation by reference of the prior application into the subject application. An express incorporation by reference must be set forth in the specification of the subject application as filed.

America Invents Act (AIA) - Post Grant Review - Other

Yes, a party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

Where another matter involving the same patent is before the Office during the pendency of the post grant review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter. Joinder may be requested by a patent owner or petitioner.

The AIA permits the parties to a post grant review to settle. A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision.

Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause.

The AIA provides that where a post grant review is instituted and not dismissed, the Board shall issue a final written decision. The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the post grant review.

Yes, a petitioner in a post grant review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the post grant review. Similarly, a petitioner in a post grant review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the post grant review.

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

The AIA provides that a party may request relief during a post grant review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged. A party seeking relief may contact the Board and request a conference call, explaining why the call is needed. The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days.

A motion will not be entered without Board authorization. Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Yes, the AIA permits either party to a post grant review to request an oral hearing.

A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during a post grant review. Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.

A petitioner may supplement information provided in the petition for post grant review by a motion within one month of the date trial is instituted.

The AIA provides that the file of a post grant review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal. The AIA also provides for protective orders to govern the exchange and submission of confidential information.

The AIA authorizes the Office to set standards and procedures for the taking of discovery during a post grant review, including that discovery be limited to evidence directly related to factual assertions advanced by either party in the proceeding.

The petitioner must demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable to trigger a post grant review. Alternatively, the petitioner may show that the petition raises a novel or unsettled legal question that is important to other patents or patent applications. The Patent Trial and Appeal Boardwill decide petitions for post grant review and conduct any ensuing reviews. In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office.

Yes, a party may request rehearing of the Board's decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

No, a party is statutorily precluded from appealing the Board's decision whether to institute a post grant review.

Yes, a patent owner may file a response after the institution of a post grant review.

To initiate a post grant review, a party must file a petition establishing certain statutory requirements.

In a petition for a post grant review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon. The petition must be accompanied by a fee. In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.

The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review. For petitions filed prior to March 19, 2013, the fee for filing a petition challenging the patentability of up to 20 claims is $35,800. For each additional claim challenged, there is a fee of $800.00. For petitions filed on or after March 19, 2013, the request fee is $12,000 plus a fee of $250.00 for each claim over 20, and the post-institution fee is $18,000 plus a fee of $550.00 for each claim over 15.

Yes, a patent owner may file a preliminary response to a post grant review petition to provide reasons why no post grant review should be instituted.

With limited exceptions, only those patents issuing from applications subject to first-inventor-to-file provisions of the AIA. The first-inventor-to-file provision of the AIA is not effective until March 16, 2013.

A post grant review may be requested on or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent.

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for a post grant review of the patent.

A petitioner for post grant review may request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b) relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

The effective date for the post grant review provision in the AIA is September 16, 2012.

America Invents Act (AIA) - Miscellaneous - Other

The Leahy-Smith America Invents Act includes a number of provisions with varying effective dates. Additionally, many of the provisions require that the USPTO issue rules to implement new procedures.

The Office presently does not have a set schedule for updates to the registration examination to include changes made by passage of the patent reform bill. However, the Office expects the registration examination will undergo a number of changes in the next eighteen months as new laws, regulations, and procedures become effective.

Yes. Comments submitted through the aia_implementation@uspto.gov email address are being considered before the Office issues a Notice of Proposed Rule Making (NPRM). Timely filed comments responding to a NPRM should address what is promulgated in the proposed rules. These comments should be submitted to the email address designated in the NPRM.

Due to the tight enactment time frames of the AIA and the rule making process, the Office does not anticipate being able to accommodate extension requests to submit comments.

No. The Office encourages you to submit your comments to aia_implementation@uspto.gov and requests that your subject line reference the topic or AIA provision(s) that your comments address. Given the tight implementation time frames resulting from the AIA, preliminary input from our stakeholders and the public on implementation of the key provisions would facilitate our review process.

America Invents Act (AIA) - Preissuance Submissions - Other

Third parties are encouraged to file third-party submissions electronically through the Office's dedicated web-based interface for third-party submissions, which can be accessed via Patent Center. Submissions may also be submitted in paper through first-class mail, United States Postal Service (USPS) Express Mail service pursuant to 37 CFR 1.10, or by hand delivery. However, processing delays will be associated with paper submissions due to the scanning and indexing of these papers by the Office. Third-party submissions may not be filed by facsimile.

When filing electronically, payment may be made on the "Pay Fees" screen by credit card, USPTO deposit account, or electronic funds transfer.

When filing in paper, payment may be made by check, money order, credit card, or deposit account. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. Credit Card Payment Form (PTO-2038) should be used when paying by credit card. Form PTO-2038 may be downloaded at https://www.uspto.gov/patents/apply/forms . To protect your credit card information, do not submit this form electronically through Patent Center. Credit card information for electronic credit card payments should be entered exclusively on the USPTO Web site providing electronic payment capability.

When filing electronically, the submitter should select the "Small Entity" link on the "Calculate Fees" screen of the dedicated third-party submission Patent Center interface and pay the applicable small entity fee. When filing in paper, the submitter should select the "small entity" box on the form PTO/SB/429 and pay the applicable small entity fee.

No, a protest under § 1.291 must not be filed via Patent Center. Instead, all protests must continue to be filed in paper.

Form PTO/SB/429 cannot be uploaded to Patent Center. Filing through Patent Center is an electronic alternative to paper filing using form PTO/SB/429. Instead of uploading the form, Patent Center will automatically generate and complete the form after a third party provides all of the necessary information on the "Application Data" screen. A third party may click on the "Third-party-preissuance-submission.pdf" hyperlink to preview the generated form on the "Attach Documents" screen, and may make any necessary corrections by going back to the "Application Data" screen. Instructions for filing electronically are located at https://www.uspto.gov/patents/apply/patent-center. Instructions for filing in paper using form PTO/SB/429 are located at http://www.uspto.gov/forms/3prsubmission_instructions.pdf.

First, check Patent Center to determine if a Notice of Allowance (NOA) has been issued in the application. If the NOA has been issued, you may not file a third-party submission. If the NOA has not been issued, determine if a first rejection has been issued by the examiner or if the application has been published for six months or longer. You may file as long as the first rejection has not been issued or the application has not been published for six months.

No, a third party cannot electronically file a preissuance submission without a Confirmation Number for the application. The Confirmation Number can be obtained by looking up the application number in Patent Center located at https://patentcenter.uspto.gov/ and viewing the Bibliographic Data. If the Confirmation Number is not available or not known, the preissuance submission cannot be filed electronically and instead must be filed in paper.

A third party may file a submission in any nonprovisional utility, design, or plant application, as well as in any continuing application, even if the application to which the submission is directed has been abandoned or has not been published. Third-party submissions may not be filed in any issued patent, reissue application, or reexamination proceeding.

Yes, the USPS Express Mail service provisions of § 1.10 apply to a preissuance submission under § 1.290.

A third party may refer to 37 CFR 1.27(a) for guidance in determining whether a party qualifies as a small entity.

Third-party submissions that are not compliant with the statute will not be entered into the image file wrapper (IFW) record of an application or considered by the examiner. Instead, non-compliant preissuance submissions will be discarded. The Office will not refund the required fees or toll the statutory time period for making a third-party submission. Additionally, the Office will not accept amendments to a non-compliant submission, but the party may file another complete submission, provided the statutory time period for filing a submission has not closed.

No, absent a request by the Office, an applicant has no duty to, and need not, reply to a preissuance submission.

A fee is required for every ten items or fraction thereof identified in the document list. If the third party does not qualify for the small entity discount, the third party would have to pay a fee of $360 for twelve listed documents (i.e., $180 for the first ten documents and $180 for the remaining two documents). If filing electronically, the third party in this example would need to split the twelve documents into two separate submissions, paying $180 for each submission.

No, a third party is not eligible for the micro entity discount.

Yes, a third party that qualifies as a small entity may take advantage of the small entity discount when making a third-party submission.

Yes, a third party must submit the required fee for every ten documents listed or fraction thereof, unless the fee exemption applies to the submission. A third party is exempt from paying a fee for a submission of three or fewer documents, provided it is the party's first such submission and the party files a "first and only" statement.

Yes, a second third party may take advantage of the fee exemption in the same application as long as the submission includes three or fewer items and is accompanied by the "first and only" statement. However, such statement could not be made where the third parties are in privity with each other.

Yes, a third party may file a subsequent preissuance submission if the need for the subsequent submission was not known at the time of the earlier submission. Any such subsequent submission would not be exempt from the fee requirement.

No, the fee must accompany a preissuance submission at the time of filing. Registered e-Filers who authenticate can save "in-progress" submissions and return to edit them prior to completing filing. Payment, in this instance, will be due when the filing is complete. Unregistered users, by contrast, must complete the filing and pay the fee at the time the submission is initiated.

Yes, the holiday/weekend rule set forth in 37 CFR 1.7(a) applies to a preissuance submission.

No, all third-party submissions must be filed prior to, not on, the dates identified in 37 CFR 1.290(b). Assuming no notice of allowance has been issued in an application, if a third-party submission is filed on the date that is six months after the date the Office published the application and a first rejection has already been mailed, the submission would not be timely and would not be entered (i.e., if the Office published the application on May 21, a third-party submission filed on November 21, which is the date that is six months after the date the Office published the application, would not be timely as, according to the rule, the submission would need to have been made on November 20 or earlier).

No, the filing of an RCE does not reset the time period for filing a third-party submission. However, the filing of an RCE does not preclude a third-party submission from being filed after the RCE, if the filing of the third-party submission would otherwise be filed within the time periods set forth in 37 CFR 1.290(b).

Yes, a third party submission must be filed prior to the date a notice of allowance is given or mailed. Where a notice of allowance has not been issued, a third party submission must be filed prior to the later of: (i) the date that is six months after the date on which the application is first published by the Office or (ii) the date of the first rejection of any claim by the examiner.

Example of a compliant concise description formatted as a claim chart for a claim having only two elements:

Claim 1 Publication X
Element A As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X.
Element B The first embodiment also includes element B of claim 1. See lines 1-3 on page 6 of publication X.

Example of a non-compliant concise description formatted as a claim chart for a claim having only two elements:

Claim 1 Publication X
Element A As discussed on page 1, publication X discloses a machine that performs the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X.
Element B The first embodiment also includes element B of claim 1. See lines 1-3 on page 6 of publication X. Thus, publication X anticipates claim 1 because it teaches all of the elements of claim 1.

If a third party files a preissuance submission on the same date the first rejection is mailed and the application has been published for more than six months, the submission would not be timely and would not be entered. All third-party submissions must be filed prior to, not on, the critical date. Where the application has been published for more than six months and no notice of allowance has been mailed, the critical date is the mailing date of the first rejection such that the third-party submission would need to be filed prior to the mailing date of the first rejection.

All non-patent publications, such as Office actions, journal articles, communications from foreign patent offices, court documents, etc. that qualify as publications should be listed under the "Non-Patent Publications" section of the form PTO/SB/429 (or entered in the "Non-Patent Publications" section of the "Application Data" screen when filing electronically).

Yes, a reliable machine translation is acceptable. The translation need not be certified.

No, a preissuance submission is required to be made in writing and contain printed publications. A software program may be submitted only if reduced to writing, such as in the form of screen shots. Additionally, evidence of publication may be required.

Example of a compliant concise description formatted as a narrative for a claim having only two elements:

"Publication X and publication Y both disclose machines that perform the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine."

Example of a non-compliant concise description formatted as a narrative for a claim having only two elements:

"Publication X and publication Y both disclose machines that perform the same function as the machine recited in claim 1. The machine set forth in publication X includes many of the same parts discussed in the specification of this application. For example, in the first embodiment depicted in Figure 2 and discussed on page 5, the machine of publication X expressly includes element A of claim 1. See lines 7-14 on page 5 of publication X. Publication Y teaches a machine having element B of claim 1. See lines 1-3 on page 6 of publication Y. Publication Y teaches the benefits of using element B in this type of a machine. Accordingly, claim 1 is obvious in view of publication X and publication Y."

Yes, the third party may include a document for which the publication date is unknown in a preissuance submission. However, the third party must supply evidence of publication. At a minimum, the third party must provide a date of retrieval or a time frame when the document was available as a publication as well as include evidence that establishes the document as a publication. Such evidence may be in the form of affidavits, declarations, or any other appropriate format.

Yes, affidavits and declarations submitted as evidence of publication must comply with the Office's formal requirements set forth in MPEP § 715.04(II).

Affidavits and declarations submitted as evidence of publication must be limited to facts establishing why a submitted document qualifies as a publication and must not to be used as a mechanism to place information that is not pertinent to establishing the document as a publication before the examiner. Further, affidavits and declarations submitted as evidence of publication should explain how the affiant/declarant has personal knowledge of the facts described therein and must be specific to the document(s) submitted for consideration.

A real party in interest can remain anonymous by having someone else make the third-party submission for them, but the submitter cannot remain anonymous. The signature requirement of 37 CFR 1.4 for papers filed in a patent application, which require a person's signature, apply to third-party submissions. Third-party submissions must be signed due to statements that are required to be made under 37 CFR 1.290(d)(5) and 37 CFR 1.290(g) (if applicable) by the party making the submission. Thus, the identity of the submitter (i.e., the party signing the submission) will be provided to the applicant upon entry of the compliant submission in the application file.

There are several items that must be included for a compliant preissuance submission:

  1. Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted [NOTE: use form PTO/SB/429 for paper submissions only; a completed form PTO/SB/429 will be automatically generated for electronic submissions];
  2. A concise description of the asserted relevance of each item identified in the document list;
  3. A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
  4. An English language translation of any non-English language item identified in the document list;
  5. Statements by the party making the submission that:
    1. The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
    2. The submission complies with the requirements of 35 U.S.C. 122(e) and § 1.290; and
  6. Any required fee, or the statement that the fee exemption applies to the submission.

No, but it is highly recommended for paper submissions. Use of form PTO/SB/429 will help to ensure that important requirements are not overlooked, such as the document listing requirements and the required statements pursuant to § 1.290(d)(5). The form PTO/SB/429 will also enable the third party to indicate whether a fee is due or to select the "first and only" statement where the fee exemption applies.

Use of this form will not be necessary for preissuance submissions filed electronically via the Office's dedicated Web-based interface for preissuance submissions, as this interface will prompt the third party to complete the fields that are provided on the form and will automatically format the entered information into an electronic version of the form PTO/SB/429 for electronic submission.

The effective date for the preissuance submission provision in the AIA is September 16, 2012.

Any member of the public may file a third-party submission, including private persons and corporate entities. However, the third party may not be the applicant or any individual who has a duty to disclose information with respect to the application under § 1.56.

A third-party preissuance submission statutorily must be made in a patent application before the earlier of: (a) the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or (ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

A third party may file any patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application.

No, an examiner is motivated to apply the best prior art available to make a rejection, regardless of whether the examiner or a third party found the prior art.

America Invents Act (AIA) - Preissuance Submissions - Patent Help - Other

Yes, to be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the non-compliant submission of three or fewer documents was accompanied by the fee exemption statement set forth in 37 CFR 1.290(g), the third party may state that the fee exemption applies to the resubmission.  When filing electronically, the statement may be made by selecting the third fee radio button in the “Statements” section at the bottom of the “Application Data” screen.  When filing in paper, the statement may be made by selecting the third fee checkbox in the “Statements” section of the form PTO/SB/429.  The corrections in the resubmission must be limited to addressing the non-compliance, and the resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission.  The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.  Note that the resubmission must be made before the statutory time period for filing a third-party submission has closed.

Yes, to be complete, the appropriate fee for the number of documents being submitted (e.g., $180 for 1-10 documents) must accompany any resubmission made in response to a notification of non-compliance. However, to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f) accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee to the resubmission. When filing electronically, the request may be made by selecting the third fee radio button in the “Statements” section at the bottom of the “Application Data” screen.  When filing in paper, the request may be made by selecting the third fee checkbox in the “Statements” section of the form PTO/SB/429.  The corrections in the resubmission must be limited to addressing the non-compliance, and the resubmission must be another complete submission, as the Office will not accept amendments to the non-compliant submission.  The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office.  Note that the resubmission must be made before the statutory time period for filing a third-party submission has closed.

Yes, if a third party provides an electronic mail message (email) address with a preissuance submission, whether filed electronically or in paper, the Office will notify the third party of such non-compliance at the email address provided and will include the reason(s) for non-compliance. No notification will be issued where a third party does not provide an email address with the submission. See Question: How should a third party request that the Office provide notification if a preissuance submission is compliant or non-compliant? for further information

Yes, the Office will notify the applicant upon entry of a compliant preissuance submission in an application file if the applicant participates in the Offices e-Office Action program. The contents of a compliant third-party submission will be made available to the applicant via its entry in the IFW of the application.

No, a concise description of relevance is not required to be presented in a particular format. As one option, it may be presented as a narrative. Alternatively as a second option, a concise description of relevance may be presented as a claim chart mapping various portions of a submitted printed publication to different claim elements.

No, merely annotating or highlighting the copy of the listed document itself will not be deemed a proper concise description of relevance.

Concise descriptions may be entered as text in the provided text box on the “Application Data” screen. Alternatively, the concise description may be uploaded as a separate document on the “Attach Documents” screen. When entering a concise description of relevance in the provided text box, up to 1000 characters may be entered. A concise description of relevance that exceeds 1000 characters must be uploaded as a separate document on the “Attach Documents” screen. When filed as a separate paper, the concise description of relevance should clearly identify the document to which it pertains.

While there is no requirement that each concise description of relevance be provided as a separate paper, the Office highly recommends this practice. Providing a separate paper for each concise description of relevance that prominently identifies printed publication to which the concise description pertains will help ensure that the screener and the examiner readily identify and consider it.

If filing electronically via the dedicated Web-based interface in EFS-Web, the request must be made on the “Applicant Data” screen under the heading “REQUEST FOR NOTIFICATION REGARDINGTHIRD PARTY PREISSUANCE SUBMISSION.” Check the box requesting the notification and enter an email address in the box provided. The email address will not be made of record in the application should the submission be deemed compliant.

If filing in paper, the request must be made on a separate sheet of paper. The paper should be clearly titled “REQUEST FOR NOTIFICATION REGARDING THIRD PARTY PREISSUANCE SUBMISSION” and identify the email address to which the notification should be directed. This separate paper must be clearly labeled so the paper is not made of record in the application.

No, the concise description of relevance must not propose rejections of the claims. Instead, the concise description should only set forth facts, explaining how an item listed is of potential relevance to the examination of the application in which the third-party submission has been filed. This is done, most effectively, by pointing out relevant pages or lines of the respective document and providing a focused description to draw the examiner's attention to the relevant issues.

Unlike the concise explanation for a protest under §1.291, which allows for arguments against patentability, the concise description of relevance required by 35 U.S.C. 122(e) is limited to a factual description of a document's relevance. The concise description of relevance, therefore, does not permit third parties to submit arguments against patentability or set forth conclusions regarding whether one or more claims are patentable.

America Invents Act (AIA) - Supplemental Examination - Other

A request for supplemental examination that fails to satisfy the filing requirements of 37 CFR 1.605, 1.610, and 1.615 will not be granted a filing date. The Office will not make a request for supplemental examination public until the request is granted a filing date. The Office has a procedure in which the request, and any other papers or information submitted as part of or accompanying the request, would not be viewable in Patent Center until a filing date is granted by the Office.

Additionally, the patent owner identified as requesting supplemental examination will be notified of the defects and will be given an opportunity to complete the requirements of the request within a specified time. A form "Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d))," is used to provide the notification for supplemental examination. If further explanation is needed as to a non-compliance item, the box at the bottom of the form will be checked. An attachment will then be completed to specifically explain why the request does not comply. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the filing requirements, the filing date of the supplemental examination request will be the receipt date of the corrected request. If the patent owner does not timely file a corrected, compliant request in response to the Office's "Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d))," the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in 37 CFR 1.20(k)(2) will be refunded. The supplemental examination proceeding also will be terminated.

At the conclusion of a supplemental examination, the Office will issue an electronic supplemental examination certificate as part of the public record for the patent. If the certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257 by a subsequent communication. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex partereexamination was ordered under 35 U.S.C. 257, will be published as an attachment to the patent. If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, ex parte reexamination will not be ordered and the fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). In this case, the electronically issued supplemental examination certificate will be published in due course as an attachment to the patent.

The Office generally expects to mail the communication entitled "Ex Parte Reexamination Ordered Pursuant to 35 U.S.C. 257," if applicable, shortly after the electronic publication of the supplemental examination certificate.

The Office will conclude a supplemental examination by issuing a certificate of supplemental examination. The certificate will indicate the results of the Office's determination as to whether any item of information filed by the patent owner in the request raised a substantial new question of patentability.

The patent owner can immunize the patent against allegations of inequitable conduct by completing a supplemental examination. Specifically, information considered, reconsidered, or corrected during a supplemental examination cannot be the basis for rendering a patent unenforceable for inequitable conduct, so long as the supplemental examination and any resulting ex parte reexamination are completed before the civil action is brought. The patent owner, however, cannot secure inequitable conduct immunization for information raised in a civil action brought before a supplemental examination.

If a patent owner commits a material fraud on Office during the supplemental examination, then the Office may confidentially refer the matter to the U.S. Attorney General and may take other action.

The Office will mail the following two documents to the patent owner at the conclusion of supplemental examination: (1) the Supplemental Examination Certificate; and (2) the Reasons for Substantial New Question of Patentability Determination. The certificate will state whether a substantial new question of patentability was or was not raised by the request for supplemental examination. The certificate also will list the items of information. The Reasons for Substantial New Question of Patentability Determination will set forth the examiner's determination as to whether each item of information raised a substantial new question of patentability.

Within 3 months from the filing date of a request for supplemental examination from a patent owner, the Office will determine whether any of the items of information filed with the request raises a substantial new question of patentability. If a substantial new question of patentability is found for any item of information, then the Office will order an ex parte reexamination of the patent.

In a supplemental examination, the Office will determine whether any item of information presented in the request raises a substantial new question of patentability. The substantial new question of patentability standard is triggered when there is a substantial likelihood that a reasonable examiner would consider an item of information important in determining the patentability of the claimed invention.

An ex parte reexamination ordered as a result of an ex parte reexamination will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each substantial new question of patentability without regard to whether it is raised by a patent or printed publication.

Yes, the Office will use an automatic page counter that will not subtract blank pages from the total page count for the non-patent document. This policy is consistent with the Office policy for application size fees.

Non-patent documents having 21 - 50 pages are subject to a fee of $180 for large entity ($90 for small entity or $45 for micro entity), which must be submitted with the request. Non-patent documents having greater than 50 pages are subject to an additional fee of $280 for large entity ($140 for small entity or $70 for micro entity) for each additional 50-page increment, or a fraction thereof, which must also be paid at the time of filing the request. For example, for a large entity, if a journal article having a length of 145 pages is submitted as an item of information which forms part of a request for supplemental examination, a document size fee of $740 is due upon the filing of the request. The $740 document size fee is calculated by adding the $180 fee for 21 - 50 pages, and two additional fees of $280 for each additional 50 pages, or a fraction thereof (i.e., a $280 fee for 51 - 100 pages, and a second $280 fee for the remaining 45 pages, which is a fraction of a 50-page increment).

Any document, other than the request, that is over 50 pages in length is subject to the summary requirement. "Any document" includes both patent and non-patent documents.

Yes, the filing fees for a supplemental examination request and any resulting ex parte reexamination were reduced to be about 22% below the Office's cost for these services. For example, the total supplemental examination filing fees are $16,500 ($4,400 for the request and $12,100 for the reexamination) for a large entity. The document size fee for 21-50 pages was increased to $180 for a large entity. The final rule also applied a 50% small entity discount and a 75% micro entity discount to the fees. These new service fees became effective on March 19, 2013. See the fee schedule posted at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

A request for supplemental examination must be accompanied by a total fee of $16,500 for a large entity ($8,250 for small entity or $4,125 for micro entity), broken down as (i) a fee of $4,400 for a large entity ($2,200 for small entity or $1,100 for micro entity) for processing and treating a request for supplemental examination; and (ii) a fee of $12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity) for ex parte reexamination ordered as a result of a supplemental examination proceeding. In addition, a request for supplemental examination must be accompanied by any applicable document size fees.

Yes, the fee of $12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity) for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded if the supplemental examination certificate indicates that no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request and reexamination is not ordered.

The document size fees apply only to non-patent documents that have a length of more than 20 pages. Non-patent documents having a length of 20 pages or less are not subject to the document size fees. Non-patent documents include, for example, non-patent literature, transcripts of audio or video recordings, and court documents. Patent documents, such as U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents, are not subject to the document size fees.

No, translations of non-English language patent documents are also not subject to the document size fees.

Cumulative items of information will be separately counted. When considering the submission of multiple documents that are believed to be cumulative, the Office recommends the patent owner select one or two of the documents as the items of information that will be submitted with the request.

Yes, a declaration or affidavit may be counted as an item of information.

No, if a declaration or affidavit presents one or more separate and distinct items of information, then each item of information presented may be counted separately. For example, if a declaration presents information relating to an issue under 35 U.S.C. 101 affecting patent claim 1, and also presents information relating to an issue under 35 U.S.C. 103 affecting patent claim 10, then each item of information within the declaration will be counted separately, resulting in two items of information.

The corrected declaration would be counted as one item of information and the marked-up copy of the previously-filed declaration would be counted as a second item of information. This is because the request included two separate documents for the examiner to consider, reconsider, or correct.

No, if the discussion within the body of the request is based, at least in part, on a supporting document, then the supporting document, and not the discussion within the request, will be considered as the item of information. For example, if the patent owner discusses a potential public use or sale of the claimed invention, and also submits a supporting document with the request as possible evidence of a public use or sale, or the lack thereof, then the supporting document, and not the discussion within the body of the request, will be considered as an item of information.

No, if the patent owner presents an image of a supporting document, such as an image of an electronic mail message or other document, within the body of the request, then a separate copy of the supporting document must be provided. The separate copy of the item of information will be considered as the item of information. The counting of an item of information may not be avoided by inserting the content of the supporting document within the body of the request.

Yes, an item of information must be in writing. The Office currently does not have the capability of retaining records in unwritten form. For this reason, any audio or video recording must be submitted in the form of a written transcript in order to be considered. A transcript of a video may be submitted together with copies of selected images of the video and a discussion of the correlation between the transcript and the copies of the video images.

Each item of information of the combination will be separately counted. For example, if a patent owner requests the Office to consider the patentability of the claims in view of a combination of reference A and reference B, reference A and reference B will be separately counted, resulting in two items of information.

No, all parties having an ownership interest in the patent must act together as a composite entity in proceedings before the Office. This policy is consistent with ex parte reexamination practice. Under rare circumstances, such as in the case of a deceased or legally incapacitated joint owner, the Office may permit less than all of the joint owners to file a request if a grantable petition under 37 C.F.R. § 1.183 requesting waiver of the provisions of 37 C.F.R. §§ 3.71 and 3.73(c) is filed. If the owner of all or a portion of the entire right, title, and interest in the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction.

No, only a patent owner may file a request for supplemental examination. The Office is not authorized to permit a party who is not a patent owner, or a party who merely states that it is, for example, an exclusive licensee or a person with sufficient proprietary interest under 35 U.S.C. 118, to file a request for supplemental examination.

No, there are no page limits applicable to a request for supplemental examination. However, if any document, other than the request, is over 50 pages in length, then the patent owner must provide a summary of the relevant portions of the document with citations to the particular pages containing the relevant portions. In addition, any non-patent document over 20 pages in length that is submitted as part of the request is subject to the document size fees.

A request for supplemental examination may include up to twelve items of information.

The patent owner may request a supplemental examination for a patent so that the Office can consider, reconsider, or correct information believed to be relevant to the patent.

The patent owner may present any information believed to be relevant to the patent. The information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.

The patent owner may file a supplemental examination; a third party is not permitted to seek a supplemental examination.

A patent owner may request supplemental examination of any patent during the period of enforceability of the patent.

The effective date for the supplemental examination provision in the AIA is September 16, 2012.

America Invents Act (AIA) - Tax Strategies - Other

Section 14 of the AIA applies to any patent application that is pending on, or filed on or after, September 16, 2011.

No. Section 14 of the AIA applies to patents issued on or after September 16, 2011.

Applicants will no longer be able to rely solely on the novelty or non-obviousness of a tax strategy embodied in their claims in order to distinguish the claims from the prior art.

The effective date of the tax strategy provisions is September 16, 2011.

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