USPTO Issues First-Inventor-to-File Examination Guidelines and Final Rule

USPTO SealIn a press release issued earlier today, the U.S. Patent and Trademark Office announced that examination guidelines and the final rule for implementing the first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act (AIA) would be published in the Federal Register on February 14 -- thirty days before the FITF provisions take effect on March 16, 2013.  According to the Office's announcement, the move to a FITF system is "one of the hallmarks of the AIA," and constitutes "a major step towards harmonization of the U.S. patent system with those of the United States' major trading partners, allowing greater consistency in the prosecution and enforcement of U.S. patents."

Although the two notices will not be published in the Federal Register until Thursday, unpublished copies of the "Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act" can be found here, and the final rule entitled "Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act" can be found here.  The unpublished notices come in at 120 and 160 pages, respectively.

The Office's announcement indicates that the examination guidelines "set[] forth the agency's interpretation of how the first-inventor-to-file provision alters novelty and obviousness determinations for an invention claimed in a patent application," and in particular "inform the public and patent examiners how the AIA's changes to the novelty provisions of law alter the scope of what is prior art to a claimed invention and how the new grace period operates."  Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO Teresa Stanek Rea stated that the "[m]igration to a first-inventor-to-file system will bring greater transparency, objectivity, predictability, and simplicity to patentability determinations and is another step towards harmonizing U.S. patent law with that of other industrialized countries."

The press release also noted the Office would be providing more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be held on Friday March 8, 2013 at the Office's headquarters in Alexandria, VA.  The training session will be webcast (with details about the webcast to be announced).

Given the length of the two notices, we will present an overview of the final rule today and will address the examination guidelines in a subsequent post.  The final rule notes that AIA § 3 amends U.S. patent law to:

(1) convert the U.S. patent system from a "first to invent" system to a "first inventor to file" system;
(2) treat U.S. patents and U.S. patent application publications as prior art as of their earliest effective filing date, regardless of whether the earliest effective filing date is based upon an application filed in the United States or in another country;
(3) eliminate the requirement that a prior public use or sale be "in this country" to be a prior art activity; and
(4) treat commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35 U.S.C. 103.

While the above changes take effect on March 16, 2013, the final rule points out that the changes "apply only to certain applications filed on or after March 16, 2013."  This is due to the effective date provision of AIA § 3(n)(1), which states that:

Except as otherwise provided in this section, the amendments made by this section shall take effect upon the expiration of the 18-month period beginning on the date of the enactment of this Act [i.e., March 16, 2013], and shall apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time--
    (A) a claim to a claimed invention that has an effective filing date as defined in section 100(i) of title 35, United States Code, that is on or after the effective date described in this paragraph; or
    (B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim.

AIA § 3(a) defines the "effective filing date" for a claimed invention in a patent or application for patent as:

(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), or 365(b) or to the benefit of an earlier filing date under section 120, 121, or 365(c).

According to the final rule notice, the rules of practice in title 37 of the Code of Federal Regulations (C.F.R.) are being revised "for consistency with, and to address the examination issues raised by, the changes in section 3 of the AIA."  Among the changes to the rules of practice are the following:

• Where a U.S. patent or U.S. patent application publication has a prior art effect as of the filing date of a foreign priority application, a certified copy of the foreign application or an interim copy of the foreign application must be filed within the later of four months from the actual filing date of the application filed under 35 U.S.C. 111(a) or sixteen months from the filing date of the prior foreign application.  Under some circumstances, the above requirement will not apply -- e.g., the foreign application was filed in a foreign intellectual property office participating with the USPTO in a bilateral or multilateral priority document exchange agreement (such offices currently consist of the European Patent Office (EPO), the Japan Patent Office (JPO), the Korean Intellectual Property Office (KIPO), and the World Intellectual Property Organization (WIPO)).

• For a nonprovisional application filed on or after March 16, 2013 that claims the benefit of the filing date of an application (i.e., foreign, provisional, or nonprovisional application, or international application designating the U.S.) filed prior to March 16, 2013, wherein the nonprovisional application filed on or after March 16, 2013 contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect.  Such statement must be provided within the later of:

(a) four months from the actual filing date of the later-filed application,
(b) four months from the date of entry into the national stage in an international application,
(c) sixteen months from the filing date of the prior-filed application, or
(d) the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013 is presented in the application.

According to the final rule, "[t]his procedure will permit the Office to readily determine whether the nonprovisional application is subject to the changes to 35 U.S.C. 102 and 103 in the AIA."

As a result of public input regarding the Office's notices of proposed rulemaking and proposed examination guidelines, the Office made some changes to the Office's proposed rules of practice pertaining to the FITF provisions of the AIA.  With respect to the requirement to submit a certified copy of the foreign application, the final rule indicates that the requirement will not apply in some circumstances, and that applicants will be permitted to submit an interim copy within the required time frame and then submit a certified copy before a patent is granted.

With respect to the requirement that the applicant provide a statement regarding the effective filing date of the claims in an application, the final rule indicates that "a statement is required only if a transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013."  The final rule defines a "transition" application as "a nonprovisional application filed on or after March 16, 2013, that claims priority to, or the benefit of the filing date of an earlier application (i.e., foreign, provisional, or nonprovisional application, or an international application designating the United States) filed prior to March 16, 2013."  The proposed rulemaking had also required a statement if a transition application discloses subject matter not also disclosed in the prior-filed foreign, provisional, nonprovisional application, or international application designating the U.S. but did not ever contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.  The final rule eliminates the requirement to make this latter statement.

As for the changes made to the proposed rules, the Office states that it "sought to address the concerns of its stakeholders as expressed in the public comment, and plans to seek additional public comment on the rules of practice pertaining to the first inventor to file provisions of section 3 of the AIA after the Office and the public have gained experience with the rules of practice pertaining to the first inventor to file provisions in operation."

In addition to a discussion of the specific rules changes (on pages 17-59 of the notice), the final rule also addresses the nearly seventy written comments the Office received in response to its notice of proposed rulemaking (primarily on pages 60 to 106).  Although several comments opposed or expressed concerns with the statement requirements in the proposed rulemaking, the final rule maintains the requirement to provide a statement in a transition application "if the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013."  A statement is no longer required if a transition application discloses subject matter not also disclosed in the prior-filed foreign, provisional, nonprovisional application, or international application designating the U.S.

For the statement that is still required, the final rule states that "this statement is needed to assist the Office in determining whether the application is subject to AIA 35 U.S.C. 102 and 103 (an AIA application) or pre-AIA 35 U.S.C. 102 and 103 (a pre-AIA application)."  The final rule asserts that "if the Office must determine on its own the effective filing date of every claim ever presented in an application filed on or after March 16, 2013, that claims priority to or the benefit of an application filed prior to March 16, 2013, examination costs will significantly increase."  The final rule notes that applicants will not have to indicate the specific claims that have a post March 16, 2013 effective filing date, or the effective filing date of each claim, as the Office does not need this information to determine whether the application is an AIA application or a pre-AIA application.  In addition, the final rule specifies that "no statement is required if the applicant reasonably believes on the basis of information already known to the individuals identified in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013."

In response to several comments regarding the mechanism for making the statement, the Office noted that it is revising the application data sheet to include a check box to allow applicants to easily indicate whether a transition application contains or ever contained a claim to a claimed invention having an effective filing date that is on or after March 16, 2013.

A number of the Office's other responses were particularly enlightening.  For example, in response to a comment that questioned how long the statement requirement would be applicable, the Office responded that (emphasis added):

The requirement for a statement for certain transition applications in §§ 1.55 and 1.78 as adopted in this final rule is implicated whenever an application filed on or after March 16, 2013, claims a right of priority to or the benefit of the filing date of an application filed prior to March 16, 2013.  This requirement, however, should not affect continuation or divisional applications because a continuation or divisional application discloses and claims only subject matter also disclosed in the prior-filed application.  See MPEP § 201.06 (defines divisional application), and § 201.07 (defines continuation application).  In addition, an application claiming a right of priority to a foreign application or the benefit of a provisional application must be filed within one year of the filing date of the foreign or provisional application.  See 35 U.S.C. 119(a) and 119(e).  In view of the one-year filing period requirement in 35 U.S.C. 119(a) and 119(e), this requirement should not affect applications filed after May 16, 2014, that claim only a right of priority to one or more foreign applications, or that only claim the benefit of one or more provisional applications (the critical date is May 16, 2014, rather than March 16, 2014, in view of the changes to 35 U.S.C. 119 in section 201(c) of the [] Patent Law Treaties Implementation Act of 2012, Pub. L. 112-211 (2012)).  Therefore, after March 16, 2014, (or May 16, 2014, the statement required by §§ 1.55 and 1.78 as adopted in this final rule for certain transition applications should be necessary only in certain continuation-in-part applications.

In response to several comments requesting that the Office clarify that an amendment to the claims that lacks support under 35 U.S.C. 112(a) does not convert that application into an AIA application, the Office responded as follows (emphasis added):

For an application filed on or after March 16, 2013, that discloses and claims only subject matter also disclosed in a previously filed pre-AIA application to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter would not convert the application into an AIA application.  35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure and thus an application may not actually "contain" a claim to a claimed invention that is directed to new matter.  The Office notes that the MPEP sets forth the following process for treating amendments that are believed to contain new matter: (1) a new drawing should not be entered if the examiner discovers that the drawing contains new matter (MPEP § 608.02); and (2) amendments to the written description or claims involving new matter are ordinarily entered, but the new matter is required to be cancelled from the written description and the claims directed to the new matter are rejected under 35 U.S.C. 112(a) (MPEP § 608.04).  This process for treating amendments containing new matter is purely an administrative process for handling an amendment seeking to introduce new matter into the disclosure of the invention in violation of 35 U.S.C. 132(a) and resolving disputes between the applicant and an examiner as to whether a new drawing or amendment to the written description or claims would actually introduce new matter.

In response to one comment suggesting that the rules should provide recourse in the situation where there has been an inadvertent addition of a claim, or a specific reference to a prior-filed application, that causes the application to be subject to AIA 35 U.S.C. §§ 102 and 103, the Office responded as follows (emphasis added):

There is no provision in the AIA for an application (or any patent issuing thereon) that contains, or contained at any time, such a claim or specific reference to be subject to pre-AIA 35 U.S.C. 102 and 103 instead of AIA 35 U.S.C. 102 and 103 on the basis of the claim or specific reference being submitted by inadvertence . . . .  As discussed previously, however, for an application filed on or after March 16, 2013, that discloses and claims only subject matter also disclosed in a previously filed pre-AIA application to which the application filed on or after March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on the same day as such application) seeking to add a claim to a claimed invention that is directed to new matter would not convert the application into an AIA application.

In response to a related comment suggesting that the Office provide an applicant with the opportunity to cancel any claims to a claimed invention having an effective filing date before March 16, 2013 from the application, and file a divisional application directed to the cancelled subject matter to permit applicants to have the claims in the divisional application examined under pre-AIA 35 U.S.C 102 and 103, the Office responded as follows (emphasis added):

If an application on filing contains at least one claim having an effective filing date before March 16, 2013, and at least one claim having an effective filing date on or after March 16, 2013, the application will be examined under AIA even if the latter claims are cancelled.  However, if a pre-AIA parent application is pending and an applicant inadvertently files a continuing application with claims having an effective filing date on or after March 16, 2013, the applicant could file a continuation or divisional application from the pre-AIA parent application without any claim to the benefit of the AIA application and without any claim to a claimed invention having an effective filing date on or after March 16, 2013.  In this situation, the continuation or divisional application would be examined as a pre-AIA application under pre-AIA 35 U.S.C. 102 and 103.

The above responses from the Office suggest that if an applicant wants to have a transition application examined as a pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103, the applicant must include claims directed only to subject matter disclosed in a previously filed pre-AIA application.  For this reason, applicants may also want to consider filing only one claim with a transition application.  In view of the Office's responses, any other claims or claim amendments should be presented after the filing date and not in a preliminary amendment filed on the same day as the transition application.  This is because claim amendments or new claims presented in an amendment other than a preliminary amendment filed on the same day as such application that are not supported by a pre-AIA application would be treated as new matter.  As the Office indicates in the final rule notice, "an application may not actually 'contain' a claim to a claimed invention that is directed to new matter," and therefore, "a claim to a claimed invention that is directed to new matter would not convert the application into an AIA application."  The final rule makes clear that if an application on filing contains at least one claim having an effective filing date on or after March 16, 2013, the application cannot be examined as a pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103 simply by cancelling the claim having an effective filing date on or after March 16, 2013.  The final rule notice also makes clear that if a claim having an effective filing date on or after March 16, 2013 is inadvertently presented on filing, the application cannot be examined as a pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103.

The final rule concludes with a discussion of rulemaking considerations (pages 106-128) and the text of the changed rules (pages 128-160).