postheadericon AIA Implementation – 09-16-2012

IPconnect: from the Expert's QuillThis is another red-letter day in the field of patent prosecution.  The last day that was this important 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;
    – Preissuance submission;
    – Supplemental examination;
    – Citation of patent owner claim scope statements;
    – Post-grant review;
    – Inter parties review; and
    – Covered business method review.

During the next few weeks, I will be blogging on issues related to these provisions being implementated that affect the greatest changes in patent prosecution. Each blog will provide an overview of the changes from a non-lawyer professional’s perspective; that is … we who physically prepare the myriad prosecution forms. 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. During the past 4 weeks or so, I’ve spent a significant portion of my time either reviewing the rules myself or attending classes related to the changes, so I feel pretty comfortable identifying the areas of change.

The Inventor’s Oath or Declaration provision encompasses several different aspects of patent prosecution. 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;
Non-inventor Applicants;
Power of Attorney changes; and
Docket ramifications related to the changes.

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.

Please remember 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 fact that the PTO filing receipt indicates that the filing date is the national phase entry date, this is NOT the official filing date.

The basic changes to the Declaration are:

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;
Language added:
a.          an indication that the application was made or authorized to be made by the inventor.

2.         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.

3.         One form per inventor (i.e., the Declaration no longer needs to include all of the inventors).

Although there are several additional issues related to the declaration, I will address those in coming blogs. In the meantime, be sure to use the new declaration for all applications filed on or after September 16, 2012.

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.

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