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Selected frequently asked questions about the America Invents Act

Intellectual Property News, Fall 2011

The following are FAQs from the U.S. Patent and Trademark Office:

Best Mode​

Question BM1:  What is the effective date for the Best Mode provision in the AIA?

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

Question BM2:  Does AIA’s amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112?

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.

Question BM3:  What is the impact of AIA’s amendment to 35 U.S.C. 282(a)(3) concerning Best Mode?

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 stated above, this new practice does not affect the patent examination practice.

Derivation Proceedings

Question D1:  What is a Derivation proceeding?

A petitioner must claim the same or substantially the same invention as the earlier application’s claimed invention. The petition must be supported by substantial evidence that the earlier claimed invention was derived from petitioner, and filed without authorization.     

Question D2:  What is the effective date of the Derivation provision?

The effective date of the Derivation provision is Sept. 16, 2012.

Question D3:  Who may file a petition for a Derivation proceeding and when should the petitioner file?

An applicant for patent may file a petition for a derivation proceeding. The petition must be filed within one year of 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.

First Inventor to File

Question FITF1: What is the effective date of the First Inventor to File provision of AIA?

The effective date for the First Inventor to File provision of AIA is March 16, 2013.

Question FITF2: I’m an independent inventor planning on filing a new nonprovisional patent application on Oct. 1, 2011. Will my patent application be subject to the first-inventor-to-file provisions?

No. The first-inventor-to-file provisions become effective on March 16, 2013. Thus, an application filed before that date would not be subject to the first-inventor-to-file provisions. The application will be treated under the first-to-invent provisions of the law in effect on Sept. 15, 2011.

Question FITF3: Once the first-inventor-to-file provisions take effect on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent?

No. Only inventors are entitled to a patent. Someone who copies another’s idea cannot be the inventor.

Question FITF4: My co-inventor disclosed our invention at a trade show one month before the filing date of our application. Will that disclosure prevent us from obtaining a patent?

No. Regardless of whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, disclosure one month prior to a filing date is not prior art to the claimed invention by virtue of a one year grace period.

Inter Partes Reexamination

Question R1: What is the effective date of the provisions effecting inter partes reexamination?

The effective date of the inter partes reexamination provisions is September 16, 2011.

Question R2: Did the AIA change the standard for inter partes reexamination?

Yes. Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination. Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. The standard for ex parte reexamination remains unchanged.

Question R3: If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes reexamination?

The Substantial New Question of patentability (SNQ) standard is applicable in determining whether the request for inter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., Sept.16, 2011).

Question R4: If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard?

Yes. If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.

Question R5: What is inter partes review and when is it available?

Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review is effective on Sept.16, 2012.

Question R6: When inter partes review under section 6 of the AIA takes effect on September 16, 2012, will pending inter partes reexaminations be converted to inter partes review proceedings?

No. Pending inter partes reexaminations will not be converted into inter partes review proceedings. Proceedings for inter partes reexamination filed prior to Sept. 16, 2012, will proceed to conclusion even if the proceedings last beyond Sept. 16, 2012

Question R7: If a request for inter partes reexamination is filed on Sept. 16, 2012, how will it be treated?

Any request for inter partes reexamination filed on or after Sept.16, 2012, will not be granted.

Inter Partes Review

Question IPR1: What is an inter partes Review proceeding?

A petitioner may request to cancel as unpatentable 1 or more claims of a patent based on §§ 102, 103 using patents or printed publications.

Question IPR2: What is the effective date of the provisions for inter partes review?

The effective date of the provisions for inter partes review is Sept. 16, 2012.

Question IPR3: Who may file a petition for an inter partes Review and when should the petitioner file?

A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute an inter partes Review of the patent. The petition must demonstrate a reasonable likelihood that the petitioner will prevail on at least one claim challenged. The petition cannot be filed until after the later of: 1) 9 months after the grant of a patent or issuance of a reissue of a patent, or 2) the date of termination of any post grant review of the patent.

Post Grant Review

Question PGR1: What is a Post Grant Review proceeding?

A petitioner may request to cancel as unpatentable 1 or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of section 282(b) (relating to invalidity), i.e., §§ 101, 102, 103, 112 (except best mode). A Post Grant Review is generally limited to patents issuing from an application filed under the first-inventor-to file system.

Question PGR2: What is the effective date of the provisions for Post Grant Review?

The effective date of the provisions for post grant review is Sept.16, 2012.

Question PGR3: Who may file a petition for a Post Grant Review and when should the petitioner file?

A person who (a) is not the owner of the patent and (b) has not previously filed a civil action challenging the validity of a claim of the patent may file, accompanied by payment of the required fee, a petition to institute a Post Grant Review of the patent. The petition must demonstrate that it is more likely than not that the petitioner will prevail on at least one claim challenged or raises a novel question that is important to other patents or publications. The petition may be filed only within 9 months after the grant of a patent or issuance of a reissue patent.

Prioritized Examination (Track 1)

Question PE1: What is prioritized examination?

Prioritized examination is a procedure for expedited review of a patent application for an additional fee. The Office’s goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.

Question PE2: What is the effective date of prioritized examination?

The effective date of prioritized examination is Sept. 26, 2011.

Question PE3: What types of applications are eligible for Prioritized Examination (Track I)? How may I file a Request for Prioritized Examination?

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Question

PE4: What fees are required upon filing a Request for Prioritized Examination (Track I)? What happens if one of the required fees is not present upon filing?

Consult the current fee schedule available at www.uspto.gov/about/offices/cfo/finance/fees.jsp for the correct fee amounts. The fees required to be paid upon filing for Prioritized Examination are:

i. Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c).

ii. Search fee, as set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m).

iii. Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).

iv. Publication fee, as set forth in 37 CFR 1.18(d).

v. Track I processing fee, as set forth in 37 CFR 1.17(i).

vi. Track I prioritized examination fee of $4800.00 ($2400.00 for small entities).

vii. 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).

viii. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h).

ix. 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 filing of the application, the request for Prioritized Examination will be dismissed. However, if an explicit authorization to charge 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.

Question PE5: Who can I contact if I have questions about a decision dismissing my Request for Prioritized Examination or about how to file a Request for Prioritized Examination via EFS-Web?

Contact the person who signed the decision dismissing the request if there is a question about the dismissal. In addition, each Technology Center (TC) will have a few representatives who can be contacted about a specific decision dismissing a request for prioritized examination. Questions related to the filing of a request for prioritized examination via EFS-Web can be directed to the Patent Electronic Business Center at 866-217-9197 or ebc@uspto.gov. General questions about the prioritized examination (Track I) program can be directed to the Office of Patent Legal Administration at (571) 272-7701 or patent.practice@uspto.gov.

Question PE6: Is applicant required to use the Office’s certification and request form PTO/SB/424?

It is strongly recommended that applicants use the Office’s certification and request form PTO/SB/424 to request prioritized examination, but the form is not required. The form is available on EFS-Web and on the Office’s Internet Web site at http://www.uspto.gov/forms/index.jsp. Failure to use form PTO/SB/424 could result in the Office not recognizing the request or delays in processing the request. If applicant decides to use an applicant-created form for requesting prioritized examination (Track I), applicant’s form should be an equivalent to the Office’s form.

Question PE7: I have an international application pending. Is there any way that I can file a U.S. application based on that international application and have the U.S. application be eligible for prioritized examination (Track I)?

Yes. An applicant may file a U.S. application under 35 U.S.C. 111(a), and in that application, claim the benefit of the earlier international application under 35 U.S.C. 365(c), or claim the right of priority of the earlier international application under 35 U.S.C. 365(a), subject to the conditions of 35 U.S.C. 365. Such an application is eligible for prioritized examination. However, an applicant may not request prioritized examination of a national stage application (submitted under 35 U.S.C. 371) of an international application.

Question PE8: I have a foreign application pending. Is there any way that I can file a U.S. application that claims priority to the foreign application under 35 U.S.C. 119(a)-(d) or (f), and have the U.S. application be eligible for prioritized examination (Track I)?

Yes. Any original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) and claiming priority to a foreign application under 35 U.S.C. 119(a)-(d) or (f) is eligible for prioritized examination.

Question PE9: I am filing an application, but one of the joint inventors has refused to execute an oath or declaration. I have prepared a petition under 37 CFR 1.47 to permit the application to be made by the other inventor(s). Can I request prioritized examination (Track I) for this application?

Yes; however, the petition under 37 CFR 1.47 must be filed with the filing of the application. Prioritized examination status will not be granted if the petition under 37 CFR 1.47 is dismissed for any reason. Applicants should consult MPEP 409.03- 409.03(g) for guidance regarding petitions under 37 CFR 1.47 to ensure that a grantable petition under 37 CFR 1.47 is filed with the application. 37 CFR 1.102(e) requires that the application must be complete upon filing as defined by 37 CFR 1.51(b), which requires an oath or declaration having the attributes set forth in 37 CFR 1.63 and 37 CFR 1.68.

Question PE10: Can I file an application under 35 U.S.C. 111(a) with a nonpublication request and a request for prioritized examination?

Yes. However, the $300 publication fee set forth in 37 CFR 1.18(d) must still be submitted with the request for prioritized examination (along with the other required fees), even though nonpublication is being requested.

Question PE11: How will I know if the limit of 10,000 granted requests for prioritized examination for the fiscal year has been reached?

The Office will post statistics, including the number of granted Track I requests, on its Web site. In addition, the Office will post a message in EFS-Web if/when the number of granted requests is close to the limit. If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in EFS-Web

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Questio

n PE12: The prioritized examination fee set forth in 37 CFR 1.17(c) is $4,800 for a non-small entity and $2,400 for a small entity. Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)?

No.

Question PE13: I just filed my utility application and the form for the request for prioritized examination through EFS-Web, but I inadvertently omitted an item. Can I supplement my original EFS-Web filing with a follow-on submission that supplies the missing item?

Yes, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed. For example, if the oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application. Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application. Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed. See also MPEP 502.05, III, D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.

Question PE14: I received a pre-examination notice from the Office of Patent Application Processing that identifies missing items or informalities in my original application filing. When will I receive a decision on my request for prioritized examination? Will my request for prioritized examination (Track I) be dismissed? Can I file an extension of time to respond to the notice?

Requests for prioritized examination will be acted upon once the application has met all formal requirements such that it is ready for examination. A description of what it means for an application to be in condition for examination is provided at MPEP 708.02, subsection VIII.C. Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice.

A proper request for prioritized examination requires that the application be complete as set forth in 37 CFR 1.51(b). Thus, the application must include a specification as prescribed by 35 U.S.C. 112 including claim(s), any required drawings, an executed oath or declaration under 37 CFR 1.63, and the required fees. If the application is not complete on filing as set forth in 37 CFR 1.51(b), then the request will be dismissed. Applicants may, however, receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52) that results in the application not being in condition for examination. These other informalities or deficiencies in the application will delay a decision on the request for prioritized examination, as noted above. However, the request for prioritized examination may still be granted if the application is complete as set forth in 37 CFR 1.51(b).

Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination (Track I) program. A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.

Question PE15: My application has been granted special status under the prioritized examination (Track I) program. Will the application remain in that special status until either issuance or abandonment of the application?

The prioritized examination program grants special status until one of the following occurs:

i. Applicant files a petition for extension of time to extend the time period for filing a reply.

ii. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.

iii. Applicant files a request for continued examination (RCE).

iv. Applicant files a notice of appeal.

v. Applicant files a request for suspension of action.

vi. A notice of allowance is mailed.

vii. A final Office action is mailed.

viii. The application is abandoned.

ix. Examination is completed as defined in 37 CFR 41.102.

Question PE16: My application has been granted special status under the prioritized examination (Track I) program. When can I expect the final disposition of the application?

The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted.

Question PE17: I received a decision dismissing my request for prioritized examination. Can I file a petition if I think the decision is not proper?

Applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper. Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181.

Question PE18: My request for prioritized examination (Track I) was dismissed. What fees can be refunded?

Only the Track I prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination. This fee will be refunded automatically (if paid) without the need for applicant to request such a refund. The Track I processing fee, set forth in 37 CFR 1.17(i), will be retained to cover the cost of processing the request. In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded. Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d). Furthermore, applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).

Question PE19: May I file a request for prioritized examination in a continuing application?

In order for a request for prioritized examination to be grantable, the application must be an original utility or plant application. The term “original application” includes both first filings and continuing applications; see MPEP 201.04(a). Thus, continuation, continuation-in-part, and divisional applications are eligible for prioritized examination, but reissue applications are not.

Question PE20: If I file a preliminary amendment in an application that includes a request for prioritized examination, will that cause a pending request to be dismissed? Will it cause termination of the special status under prioritized examination if the request has already been granted?

A preliminary amendment filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted, so long as the preliminary amendment does not cause the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.

Question PE21: I understand that the publication fee as set forth in 37 CFR 1.18(d) must be paid when filing a request for prioritized examination. May I submit a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i)? If I submit a nonpublication request, must I still pay the publication fee? May I request a refund of the publication fee if I submit a nonpublication request?

You may submit a nonpublication request for an application even if prioritized examination is requested. However, the publication fee still must be paid. You may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).

Tax Strateg

ies

Question TAX1: How does Section 14 of the AIA affect the patentability of tax strategies?

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.

Question TAX2: What is the effective date of the tax strategy provisions in the AIA?

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

Question TAX3: Which patent applications will be subject to section 14 of the AIA?

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

Question TAX4: If I have a patent issued before Sept. 16, 2011, that undergoes reexamination, will Section 14 of the AIA apply during the reexamination?

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

Transitional Program for Covered Business Method Patents

Question TPGR1: What is the Transitional Program for Covered Business Method Patents?

Like a Post Grant Review proceeding, the Covered Business Method Patent Program involves a request to cancel as unpatentable 1 or more claims of a patent and generally applies the provisions for Post Grant Review. The Transitional Program for Covered Business Method Patents applies to patents issuing from applications filed under a first-inventor-to-file system, and unlike Post Grant Review, it also applies to patents issuing from applications filed under the current first-to-invent system. Additionally, there are limitations on the type of prior art that may be used as set forth in Section 18 of the AIA.

Question TPGR2: What is the effective date of the Transitional Program for Covered Business Method Patent?

The effective date of the Covered Business Method Patent Program is Sept. 16, 2012.

Question TPGR3: Who may file a petition for a Transitional Program for Covered Business Method Patent proceeding and when should the petitioner file?

In addition to the requirements for a PGR petitioner, the petitioner must have been sued or charged with infringement under a covered business method patent. The petition may be filed one year after the date of enactment, but prior to 8 years after regulations take effect.

Miscellaneous

Question MISC1: When will the examination for registration to practice before the Office in patent matters be updated to include questions drawn to the Smith-Leahy America Invents Act?

The Smith-Leahy 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.

Source:  U.S. Patent and Trademark Office, “America Invents Act”, “AIA Frequently Asked Questions. See www.uspto.gov/aia_implementation/faq.jsp.

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