On August 14, 2012, the Office Patent Trial Practice Guide was published by the U.S. Patent and Trademark Office. The Leahy-Smith America Invents Act (AIA) establishes several new trial proceedings to be conducted by the Patent Trial and Appeal Board (Board) including inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings.
The guide can be found here:
http://www.uspto.gov/aia_implementation/trial_practice_guide.pdf
The practice guide applies to inter partes review, post-grant review, and covered business method patent review proceedings commencing on or after September 16, 2012, as well as derivation proceedings commencing on or after March 16, 2013
Rules are provided for motions to seal, procedures for filing supplemental information, standards and procedures for discovery, sanctions for improper use of the proceeding, entry of protective orders, and oral hearings.
Thursday, August 16, 2012
Wednesday, August 15, 2012
Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention
On August 14, 2012, changes to implement the Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention provisions of the America
Invents Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/covered_business_method_definition.pdf
The changes in this final rule take effect on September 16, 2012. The AIA provides that this provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
This final rule sets forth the definitions of the terms “covered business method patent” and “technological invention” that the Office will use in conducting transitional covered business method patent review proceedings.
Section 42.301(a) adopts the definition for covered business method patents provided in section 18(d)(1) of the AIA. Specifically, the definition provides that a covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
Section 42.301(b) sets forth the definition for technological invention for covered business method patent review proceedings. The definition of technological invention provides that in determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods, the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. The Office recognizes that, in prescribing a regulation to define technological invention, the Office must consider the efficient administration of the proceedings by the Office, and its ability to complete them timely, consistent with 35 U.S.C. 326(b).
The rules can be found here:
http://www.uspto.gov/aia_implementation/covered_business_method_definition.pdf
The changes in this final rule take effect on September 16, 2012. The AIA provides that this provision and any regulations issued under the provision will be repealed on September 16, 2020, with respect to any new petitions under the transitional program.
This final rule sets forth the definitions of the terms “covered business method patent” and “technological invention” that the Office will use in conducting transitional covered business method patent review proceedings.
Section 42.301(a) adopts the definition for covered business method patents provided in section 18(d)(1) of the AIA. Specifically, the definition provides that a covered business method patent means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.
Section 42.301(b) sets forth the definition for technological invention for covered business method patent review proceedings. The definition of technological invention provides that in determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods, the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art, and solves a technical problem using a technical solution. The Office recognizes that, in prescribing a regulation to define technological invention, the Office must consider the efficient administration of the proceedings by the Office, and its ability to complete them timely, consistent with 35 U.S.C. 326(b).
Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions
On August 14, 2012, changes to implement the Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions provisions of the America Invents
Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/general_trial_rules.pdf
The changes in this final rule take effect on September 16, 2012.
The final rule provides a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This final rule also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
The final rule sets forth (1) the evidentiary standards, procedure, and default times for conducting trial proceedings; (2) the fees for requesting reviews; (3) the procedure for petition and motion practice; (4) the page limits for petitions, motions, oppositions, and replies; (5) the standards and procedures for discovery of relevant evidence, including the procedure for taking and compelling testimony; (6) the sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding; (7) the procedure for requesting oral hearings; (8) the procedure for requesting rehearing of decisions and filing appeals; (9) the procedure for requesting joinder; and (10) the procedure to make file records available to the public that include the procedures for motions to seal, protective orders for confidential information, and requests to treat settlement as business confidential information.
The rules can be found here:
http://www.uspto.gov/aia_implementation/general_trial_rules.pdf
The changes in this final rule take effect on September 16, 2012.
The final rule provides a consolidated set of rules relating to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents, and derivation proceedings. This final rule also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
The final rule sets forth (1) the evidentiary standards, procedure, and default times for conducting trial proceedings; (2) the fees for requesting reviews; (3) the procedure for petition and motion practice; (4) the page limits for petitions, motions, oppositions, and replies; (5) the standards and procedures for discovery of relevant evidence, including the procedure for taking and compelling testimony; (6) the sanctions for abuse of discovery, abuse of process, or any other improper use of the proceeding; (7) the procedure for requesting oral hearings; (8) the procedure for requesting rehearing of decisions and filing appeals; (9) the procedure for requesting joinder; and (10) the procedure to make file records available to the public that include the procedures for motions to seal, protective orders for confidential information, and requests to treat settlement as business confidential information.
Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act
On August 14, 2012, changes to implement the supplemental examination provisions of the America Invents
Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The supplemental examination provisions permit a patent owner to request supplemental examination of a patent.
A request for supplemental examination must contain: (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length.
The cost for filing a supplemental examination is $5,140 for the initial request plus $16,120 for the ex-parte re-examination fee. Both the initial request fee and the ex-parte re-examination fee must be paid at the time of initial request. The $16,120 ex-parte re-examination fee will be refunded if no re-examination is ordered. The rules also finalize the increase in the fee for filing a request for ex-parte reexamination at $17,750, a much higher amount than before.
The rules can be found here:
http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The supplemental examination provisions permit a patent owner to request supplemental examination of a patent.
A request for supplemental examination must contain: (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length.
The cost for filing a supplemental examination is $5,140 for the initial request plus $16,120 for the ex-parte re-examination fee. Both the initial request fee and the ex-parte re-examination fee must be paid at the time of initial request. The $16,120 ex-parte re-examination fee will be refunded if no re-examination is ordered. The rules also finalize the increase in the fee for filing a request for ex-parte reexamination at $17,750, a much higher amount than before.
Changes to Implement the Inventor's Oath or Declaration Provisions of the Leahy-Smith America Invents Act
On August 14, 2012, changes to implement the inventor's oath or declaration provisions of the America Invents
Act were published by the U.S. Patent and Trademark Office.
The rules can be found here:
http://www.uspto.gov/aia_implementation/InventorOath_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The changes provide a mechanism for assignees to file and prosecute a patent application as the applicant on behalf of the inventor. In addition, juristic entities are required to use a registered patent agent or attorney to take action in a patent application.
35 U.S.C. 115(d)(2) provides that an applicant may provide a substitute statement where an inventor is unable to file the oath or declaration where an individual is under an obligation to assign the invention but has refused to make the oath or declaration required. Therefore, while an assignee may make an application for patent, an oath or declaration (or an assignment containing the required statements) by each inventor is still generally required.
The rules can be found here:
http://www.uspto.gov/aia_implementation/InventorOath_Rules.pdf
The changes in this final rule take effect on September 16, 2012.
The changes provide a mechanism for assignees to file and prosecute a patent application as the applicant on behalf of the inventor. In addition, juristic entities are required to use a registered patent agent or attorney to take action in a patent application.
35 U.S.C. 115(d)(2) provides that an applicant may provide a substitute statement where an inventor is unable to file the oath or declaration where an individual is under an obligation to assign the invention but has refused to make the oath or declaration required. Therefore, while an assignee may make an application for patent, an oath or declaration (or an assignment containing the required statements) by each inventor is still generally required.
Subscribe to:
Posts (Atom)