America Invents Act: USPTO Publishes Final Examination Guidelines for the First-Inventor-to-File Provisions


On July 26, 2012, the United States Patent and Trademark Office (USPTO) published proposed Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act (AIA), which become effective on March 16, 2013. The USPTO gathered public input through a round table discussion, numerous discussions at roadshow presentations, and approximately seventy submitted public comments. Based upon the public input, the USPTO revised the examination guidelines to produce the final Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act, published in the Federal Register on February 14, 2013.

The final examination guidelines published by the USPTO include two noteworthy changes from the proposed examination guidelines. Specifically, these changes in the final examination guidelines clarify the USPTO’s position on what qualifies as prior art for the purpose of precluding the grant of a patent. First, the USPTO adopts an interpretation of the on-sale bar under AIA 35 U.S.C. § 102(a)(1) that only includes commercial activity that is “available to the public.” Second, the USPTO retreats from its narrow view of the scope of intervening public disclosures that are excluded as prior art under AIA 35 U.S.C. § 102(b)(1)(B).

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