Recap of Recent AIA-related PTO Activities

By Jason Rantanen

The America Invents Act contains several provisions that require the PTO to (1) issue new rules and (2) report back to Congress on specific patent-related issues.  In addition to the proposed Supplemental Examination rules I discussed yesterday, the PTO also recently published four other proposed sets of rules and completed two of its reports. 

Proposed Rules
Submissions to the PTO: Two related sets of rules address submissions to the PTO, one implementing the preissuance submissions by third parties provision of the AIA and the other addressing post-issuance submissions.  Paul Morgan recently wrote a guest post discussing these proposed rules.  The Federal Register sections are available here: /media/docs/2012/01/77fr448.pdf and /media/docs/2012/01/77fr442.pdf, and the rules are open for public comment until March 5, 2012.

OED: On January 5, the PTO also published its proposed rules to implement the statute of limitations provision for office disciplinary proceedings.  Dennis's discussion of these rules is available here, and the full set of rules is available at /media/docs/2012/01/77fr457.pdf.  The comment period for these rules runs until March 5, 2012. 

Inventor's Oath: The following day, the PTO published its proposed changes to the rules relating to the inventor's oath or declaration.  The public comment period for those proposed rules runs until March 6, 2012, and the rules are available at /media/docs/2012/01/77fr982.pdf

AIA-Mandated Studies
International Patent Protections for Small Businesses: As required by the AIA, earlier this month the PTO submitted to Congress a report on international patent protections for small businesses.  Based upon its study, the PTO declined to recommend a program of taxpayer-funded financial assistance to support small business foreign patenting at the present time. The report is available at /media/docs/2012/01/20120113-ippr_report.pdf.

Prior User Rights: The PTO also recently completed its report on prior user rights.  The report essentially concludes that there is an insufficient basis to recommend a change to the prior user rights scheme chosen by Congress, and is available at /media/docs/2012/01/20120113-pur_report.pdf.

Genetic Testing: Earlier this week, the PTO published a Request for Comments and Notice of Public Hearings in connection with its study on genetic testing.  Public hearings will be held on Febuary 16, 2012 in Alexandria, Virginia, and on March 9, 2012 in San Diego, California.  Written comments will be accepted until March 26, 2012.  The announcement is available at /media/docs/2012/01/2012-1481_genetic-testing-hearing-notice.pdf.