Patent Reform in U.S. Patent and Trademark Office

All the new patent rules didn’t all take effect when on September 16, 2011 President Barack Obama signd Leahy-Smith America Invents Act of 2011 into law. On the one-year anniversary of the act many of the new rules kicked in.

The patent and trademark office was put to the task of incrementally placing the rules into effect.  And some of the rules won’t take effect until 2013.

With the one-year anniversary last September some of the new rules and procedures in the patent application process are now in effect one year after the signing of the bipartisan patent reform legislation.

New rules now in operation:

• Administrative trial provisions–inter partes review, post-grant review, and the transitional program for covered business method patents. This now allows third parties to challenge the patentability of an issued patent in an administrative proceeding instead of an expensive date in a federal district court law suit.
• The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the USPTO in a new procedure that may protect the patent from an inequitable conduct charge.
• The inventors oath and declaration provision which allows assignee filing of a patent application without the inventor.
• The citation of prior art and written statements provision enables the USPTO to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other USPTO proceedings.

Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. was quoted to say:

“These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster,”

The AIA also gave the USPTO the power to open new satellite offices in Dallas-Fort Worth, Denver, and Silicon Valley. The USPTO opened a Detroit satellite office in July.

The final changes are going to take place on March 16, 2013, the long-awaited major changes will be:

•  first-inventor-to-file system
• Derivation Proceeding to ensure that the first inventor to file obtains the patent has already been published.