IP Update, Vol. 15, No. 2, February 2012


In This Issue:



Contractual Interpretation

Excerpt from Patents / Post-Grant Procedures

USPTO Releases Proposed Rules and Fees for Post-Grant Procedures

by Bernard Codd

The U.S. Patent and Trademark Office (USPTO or PTO) recently released proposed rules and fees for the post-grant procedures authorized by the America Invents Act (AIA).  The new post-grant procedures, which will take effect on September 16, 2012, include supplemental examination, inter partes review, post-grant review and a transitional program for covered business method patents.  In addition, the USPTO also proposed significantly increased fees for ex parte reexamination.  

Supplemental Examination

Supplemental examination can only be requested by the patent owner.  Under the proposed rules, each request for supplemental examination would be limited to 10 items of information.  In addition, each request must include an identification of each aspect of the patent to be examined; identification of each issue raised by each item of information; a separate detailed explanation for each identified issue; an explanation of how each item of information is relevant to each aspect to be examined and of how each item of information raises each of the identified issues.  The patent owner must submit a copy of each item of information and a summary of the relevant portions of any submitted document over 50 pages in length.

Please see full update below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© McDermott Will & Emery | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.