Final Rules on First-to-File Regime

Patent

By Dennis Crouch

On February 14, 2013, the USPTO published its final rules to govern implementation of the first-to-file provisions of the Leahy-Smith America Invents Act. The new rules will apply to any application claiming with an effective filing date of on or after March 16, 2013. The USPTO has simultaneously released its Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act. These documents run 160 and 120 pages respectively.

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8 thoughts on “Final Rules on First-to-File Regime”

  1. 8

    “Am I the only one surprised by this interpretation?”

    I hope the numbers are small – I advised of this a long, long time ago.

  2. 7

    Maybe this has been discussed before and I just missed it, but on pg 73 of the guidelines the PTO definitively states that AIA 35 USC 102(a)(I) does NOT cover secret sales or offers for sale. Under pre-AIA rules, even a secret offer for sale started the one year clock. If the courts interpret the statute the same way, then this is a substantial change. The PTO’s interpretation is based on the “or otherwise available to the pulbic” residual clause in 102(a). Am I the only one surprised by this interpretation? Have I just not been paying close enough attention?

  3. 6

    They made the grace period slightly more useful by rephrasing it from “any, even trivial variations” on an inventor’s disclosure being sufficient to make the intervening publication prior art, to “if subject matter of the intervening disclosure is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor, the exception in AIA 35 U.S.C. 102(b)(1)(B) applies to such subject matter of the intervening disclosure.” It still guts the grace period, but it’s not quite as dead as it had been under the original interpretation.

    The rules also say that in order for a WIPO reference to be considered as of its filing date, it must designate the US. I saw that in the original regs too, but it didn’t seem to correspond to what was in the law itself. Has anyone looked into that?

    Anything else changed?

  4. 5

    I love getting my training from Patently-O first. Thanks for posting this, Dennis!

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