U.S. Patent and Trademark Office Issues Proposed Rules for Post-Issuance Patent Review under the America Invents Act


On Wednesday, January 25, 2012, and again on February 9 and 10, 2012, the United States Patent and Trademark Office issued proposed rules for new post-issuance patent review proceedings, as enacted by the Leahy-Smith America Invents Act1 signed into effect by President Obama on September 16, 2011. The America Invents Act (“AIA”), in addition to creating a “first-to-file” patent system, calls for the creation of new post-issuance proceedings. Those proceedings include, supplemental examination, Post-Grant Review (“PGR”), a Transitional Program for Covered Business Method Patents (“CBM”), and Inter Partes review (“IPR”). All of the new proceedings, except the supplemental examination, are to be overseen and conducted by the Patent Trial and Appeal Board (“the Board”) in a litigation-style environment. Each of the new proceedings provides patent owners and third parties varying options for additional agency review, correction or cancellation of claims in an issued patent. This alert provides a summary of each of the proceedings, differences among  them,and the associated fees for requesting and prosecuting each type.

Supplemental Examination

In proposed rules published January 25, 2012, the Patent and Trademark Office (“PTO”) seeks to implement a supplemental examination proceeding for patent owners. The proposed supplemental examination guidelines allow for a patent owner to petition the PTO to review, consider, reconsider, or correct information that may affect the patentability of the claims in the patent owner’s already issued patent.

Please see full alert below for more information.

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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.

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