USPTO Issues Several Final Rules for Implementing AIA Provisions

[author: Donald Zuhn]

USPTO SealOn Tuesday, the U.S. Patent and Trademark Office published six notices in the Federal Register providing five final rules packages for implementing various provisions of the Leahy-Smith America Invents Act and a practice guide for proceedings before the Patent Trial and Appeal Board.  With the publication of the six notices, the Office has completed the first round of an AIA-related rulemaking process that began in January with the release of several notices of proposed rulemaking and a practice guide for proposed trial rules.

Earlier this summer, the Office issued final rules regarding the preissuance submissions by third parties provisions, statute of limitations provisions for Office disciplinary proceedings, and miscellaneous post patent provisions of the AIA:

• Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act, 77 Fed. Reg. 42150 (July 17, 2012) -- Patent Docs report;

• Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings, 77 Fed. Reg. 45247 (July 31, 2012) -- Patent Docs report; and

• Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 46615 (August 6, 2012) -- Patent Docs report.

The Office published the following notices on Tuesday:

• Rules of Practice for Trials Before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions, 77 Fed. Reg. 48612 (August 14, 2012);

• Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings, and Transitional Program for Covered Business Method Patents, 77 Fed. Reg. 48680 (August 14, 2012);

• Transitional Program for Covered Business Method Patents -- Definitions of Covered Business Method Patent and Technological Invention, 77 Fed. Reg. 48734 (August 14, 2012);

• Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (August 14, 2012);

• Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 48776 (August 14, 2012); and

• Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees, 77 Fed. Reg. 48828 (August 14, 2012).

The final rule implementing the inter partes and post-grant review proceedings and transitional program for covered business method patents provisions of the AIA combines rules that were separately proposed for derivation proceedings, inter partes review proceedings, and post-grant review proceedings under the AIA.  Thus, the need for fewer final rules notices than the number of notices of proposed rulemaking the Office issued earlier this year.

As with the final rules notices issued earlier this summer, Patent Docs will provide summaries regarding a number of the final rules notices published on Tuesday in subsequent posts.


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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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