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8.14 “Misc Other 2″ – America Invents Act

Office of Enrollment and Discipline Statute of Limitations America Invents Act Patent Law

Office of Enrollment and Discipline Statute of Limitations America Invents Act Patent Law

Office of Enrollment and Discipline Statute of Limitations

Overview

Section 3 of the America invents acts provides the office of enrollment and discipline to have a longer statutory time limit for initiating a disciplinary proceeding against a person who fails to comply with 35 USC 2.

Specifics

The previous statute of limitations was understood to be five years. The new provision allows for the office of enrollment and discipline to initiated this proceeding no later than one year after the date on which the director receives the grievance.

The grievance must be filed within 10 years of the occurrence of the misconduct on which is based

A grievance is any source received by the OED director that presents possible grounds for discipline of a specified practitioner

Key dates

September 16, 2011

  • When the provision became effective.

August 30, 2012

  • When the rules implementing this provision became effective

Key concepts

  • Statutory time limit extended from five years to 10 years
  • One year to initiate grievance from submittal date
  • Grievance can be from any source

Rules and Laws

  • 35 U.S.C. § 2(b)(2)(D)
  • 28 U.S.C. § 2462
  • 37 C.F.R. § 11.1

Tax Strategies Deemed within Prior Art

Overview

Section 14 of the America Invents Act limits what can be used to differentiate claimed inventions from prior art under 102 or 103.

Specifics

A strategy for reducing, avoiding or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.

This does not apply to the component of the invention that is a method, apparatus, technology, computer program product or system that is used solely for preparing a tax or information return or that is used solely for financial management.

Claimed inventions which include this tax strategy are still able to be patented however this can not be the basis for non-obviousness or its uniqueness.

Key dates

September 16, 2011

  • Date this provision went into effect
  • Also applies to any real examinations or post-grant proceedings on patents issued on/after September 16, 2011

Key concepts

  • Tax strategies cannot be the basis for uniqueness or non-obviousness
  • Can be included in a claim but cannot be the source of the non-obviousness or uniqueness
  • Does not apply to the component of the invention that is a method, apparatus, technology, computer program product, or system that is used solely for preparing attacks or information return or that is used solely for financial management

 

Priority Examination for Important Technologies

Overview

Section 25 of the America invents act allows the office to establish a procedure for prioritize examinations of applications for products, processes, or technologies that are important to the national economy or national competitiveness.

Key dates

September 16, 2012

  • date the provision became effective

Key concepts

  • Prioritized examination available for patents that affect national economy or national competitiveness.