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8.0 – America Invents Act (AIA)

Passed on September 16, 2011 this Act represents a major change in the United States patent system.

Some major changes include: removal of the inter partes reexamination, addition of the inter partes review and post grant review (replacing the inter partes reexamination), removal of best mode as a grounds for invalidating a granted patent, addition of micro entities as a subset to the small entity which will receive 75% off certain fees, extension of prior user rights defense, implementation of a prioritized examination, removal of certain restrictions on the Oath/Declaration, implementation of the supplemental examination, cancelation of the statutory invention registration option, moving from first-to-invent to first-inventor-to-file and addition of the derivation proceeding as a safeguard to the first-inventor-to-file system.

The USPTO will begin testing on this additional material beginning October 2012.  As with all new questions on the patent bar exam, these questions will be first entered into the exam as beta questions and will be subsequently moved to regular scored questions once this beta phase is complete.

The following topics of the America Invents Act will be discussed in different posts of the study blog:

Also, the USPTO has a nice website which has a lot of helpful information on the new America Invents Act implementation.  Click on the picture below to be taken to this website and review.  Please take note of the information on the left side of the website for easy navigation of the various resources available to you.

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8.5 “Citation of Prior Art and Written Statements” – America Invents Act

Citation of Prior Art and Written Statements America Invents Act Patent Law

Citation of Prior Art and Written Statements America Invents Act Patent Law

Overview

Section 6(g) of the America invents act amends 35 USC 301 to expand the scope of information any party may cite in a patent file to include written statements regarding patentability made by the patent owner before a federal court or the office.  Previously, only patents or printed publications could be cited in a patent file.

Either 3rd party or the patent owner can cite patent owner statements in a patent file.  A 3rd party can request to have their identity remain unknown and it will not be included in the patent file.

Claim scope submission:

A statement regarding the scope of the claims made before federal court or the USPTO is allowed to be filed.  The following are required for this claim scope statement to be allowed: an explanation of the pertinence and manner of applying the written statement to at least one claim; Additional evidence, documents or pleadings from the proceeding where the statement took place that address statement; Explanation of the pertinence and manner of applying the written statement to at least one claim; Additional evidence, documents or pleadings from the proceeding where the statement took place that address statement; Identification of the proceeding where the patent owner made the statement; Identification of the papers or portion of the papers where the statement is made; Explanation of how the statement takes a position on the scope of any claim; Proof that the statement was served to the patent owner by the third party.  The patent owner can explain how the patentability is effected when submitting a claim scope statement.

These written statements can only be used by the office to determine the meaning of the patent claim in ex parte re-examination’s THAT HAVE ALREADY BEEN ORDERED, inter parte reviews and post-grant review proceedings that have been instituted.  The claim construction will not be solely based on submitted statement during the reexamination, but the statement will be weighed with other relevant information by the USPTO.

Key dates

September 16, 2012

  • Date this provision took effect

August 6, 2012

  • Date final rules were published

 Key concepts

  • Written statements regarding patentability can be submitted
  • Can only be used in ex parte re-examination’s that have already been ordered
  • And in inter partes review and post-grant review proceedings that have been instituted

Rules and Laws

  • 35 USC 301
  • 37 CFR 1.501