USPTO Proposes More Rules for Implementing AIA Provisions

Last November, officials from the U.S. Patent and Trademark Office indicated that ten notices of proposed rulemaking to implement various provisions of the Leahy-Smith America Invents Act were being drafted and vetted by the Office, and that the notices would be published in January 2012 (see "USPTO News Briefs").  By the end of its self-imposed deadline, the Office had released five notices offering proposed rulemaking regarding:

• Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (77 Fed. Reg. 442) -- Patent Docs report;
• Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act (77 Fed. Reg. 448) -- Patent Docs report;
• Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings (77 Fed. Reg. 457) -- Patent Docs report;
• Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act (77 Fed. Reg. 982) -- Patent Docs report; and
• Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees (77 Fed. Reg. 3666) -- Patent Docs report.

On Thursday, the Office released a set of seven notices requesting comments and/or providing additional proposed rulemaking.  Among the recent set of notices were the following:

• Practice Guide for Proposed Trial Rules (77 Fed. Reg. 6868);
• 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. 6879);
• Changes To Implement Derivation Proceedings (77 Fed. Reg. 7028);
• Changes to Implement Inter Partes Review Proceedings (77 Fed. Reg. 7041); and
• Changes To Implement Post-Grant Review Proceedings (77 Fed. Reg. 7060).

As with the first set of proposed rules, Patent Docs plans to discuss each of the notices published last week, beginning with the notice to implement the derivation proceedings provisions of the AIA.  Subsequent posts will address the other notices.

Please see full update 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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