What the America Invents Act Means for Patent Prosecution
Cedar Hill, United States (IBwire.com - November 05, 2012)
We have arrived at yet another red-letter day in the field of patent prosecution. The last date of such importance was June 8, 1995 when NAFTA and GATT-TRIP became effective in the USPTO.
The America Invents Act (AIA) was signed into law on September 16, 2011 by President Obama. Seven (7) provisions of the AIA went into effect on September 16, 2012. These provisions relate to:
Inventor’s oath or declaration;
Citation of patent owner claim scope statements;
Inter parties review; and
Covered business method review.
Please note that this is not legal advice, nor is it intended to replace any instructions that you may receive from your attorney. In addition, there are varying interpretations of different portions of the law – so be sure to check and verify everything with your attorney.
INVENTOR'S OATH OR DECLARATION
I consider this provision the most important because of how it relates to prosecution. The final rules of this AIA implementation are 52 pages long, and as usual, very difficult to read and understand. The Inventor’s Oath or Declaration provision encompasses several different aspects of patent prosecution. In future blogs I will be reviewing each of the following:
Inventor’s Declaration (original & copy);
Application Data Sheet & Supplemental ADS;
Substitute Statement in Lieu of an Oath;
Assignment & Declaration;
Power of Attorney changes; and
Docket ramifications related to the changes.
But for now ...
OH LOOK --- FORMS!
The PTO has released several new forms and changed a few others with this implementation. What I consider the two most important are the Oath/Declaration and the Application Data Sheet (ADS). An easy way to tell the difference between the old forms and the new forms is to look at the form number of the document – the new form numbers begin with
PTO/AIA/ and the old form numbers begin with PTO/SB/. That doesn’t mean that only the AIA forms are to be filed – many forms were not changed and they retain the old PTO/SB designation.
These new forms are required for all applications filed on or after September 16, 2012. “Filed” is defined as the "official filing date.” If the filing date of an application is September 15, 2012 or earlier, then the old forms must be used – if the filing date is September 16, 2012 or later, then the new forms must be used. That includes all continuation and divisional applications – new declarations will be required for these applications.
Recall that the official filing date of a PCT national phase is the filing date of the PCT application and NOT the date on which the US National Phase was entered. Despite the PTO filing receipt indicating that the filing date is the national phase entry date, the national phase entry date is NOT the official filing date.
Basic changes to the Declaration include:
1) LANGUAGE REMOVED
(a) indication that the inventor is the “first” inventor;
(b) the statement that the inventor has “reviewed and understood” the application;
(c) the duty of disclosure information;
(d) all priority information; and
(e) address & citizenship of the inventors.
2) LANGUAGE ADDED
(a) an indication that the application was made or authorized to be made by the inventor.
3) THE DECLARATION IS NO LONGER DUE AT FILING.
The filing of the signed declaration can be delayed until the application has been allowed. If the Declaration has not been filed by the date the application is allowed, the PTO will issue a requirement for it on the Notice of Allowability – the signed document will be due within 3 months (non-extendable). Note that there may be PTA implications of delayed filing – these rules are not yet released, so file late at your own risk.
4) ONE FORM PER INVENTOR
The Declaration no longer needs to include all of the inventors.
Remember: what dictates using an old language declaration versus a new language declaration is the filing date of that specific application – not the filing date of the parent, nor the date on which the declaration is submitted.
If the FILING DATE of an application is on or after 9/16/2012, then a declaration with the new language must be used. There are several additional issues related to the declaration which I will address in upcoming blogs. In the meantime, be sure to use the new declaration for all applications filed on or after September 16, 2012.
Viola Ange is an Intellectual Property Prosecution Specialist with 28 years of industry expertise. She has been an IP prosecution paralegal training instructor since 1990, and maintains nonlawyer memberships with the American Bar Association and the Paralegal Division of the Texas State Bar. Ms. Ange serves on the Texas State Bar's Patent Legislation / PTO Practice Committee, as well as the technical advisory board of The Institute for Law and Technology at the Center for American and International Law.
Her firm IPParalegals has been the industry leader in providing dedicated patent, trademark and copyright prosecution paralegal services since 1996. To learn more call toll free in the U.S. at 1.888.477.7227, direct at 1.469.454.609 or visit http://ipparalegals.com.
Cedar Hill, TX
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