USPTO Issues Rules to Implement AIA Technical Corrections

by McDonnell Boehnen Hulbert & Berghoff LLP

USPTO SealIn the past week, the U.S. Patent and Trademark Office has published two Federal Register notices to implement technical corrections to the Leahy-Smith America Invents Act.  On Monday, the Office issued an interim final rule (78 Fed. Reg. 19416) that revises the rules of practice to implement changes to the patent term adjustment (PTA) provisions as provided in § 1(h) of the Technical Corrections Act, which was enacted on January 14, 2013.  Section 1(h) of the Technical Corrections Act specifies that the fourteen-month period within which the Office must issue a notice of rejection under 35 U.S.C. § 132 or notice of allowance under 35 U.S.C. § 151 (see 35 U.S.C. § 154(b)(1)(A)(i)(II)) and the three-year application pendency period provided by 35 U.S.C. § 154(b)(1)(B) are to be measured from the same date, i.e., the date of commencement of national stage under 35 U.S.C. § 371.

Section 1(h) also revises the provisions for notifying applicants of PTA determinations and for requesting reconsideration and judicial review of the Office's PTA determinations.  With regard to notifying applicants of PTA determinations, the interim rule changes the rules of practice to eliminate the need for the Office to provide an initial PTA determination with the notice of allowance, before the PTA under 35 U.S.C. §§ 154(b)(1)(A)(iv) (for not issuing a patent within four months following payment of the issue fee) and 154(b)(1)(B) (for not issuing a patent within three years after the actual filing date) can be determined.  Although the Office will no longer provide an initial PTA determination with the notice of allowance, under 37 C.F.R. § 1.705(c) Applicants must still file a request for reconsideration prior to the issuance of a patent in order to reinstate PTA reduced pursuant to 37 C.F.R. § 1.704(b) for failing to reply to a rejection, objection, argument, or other request within three months of the date of mailing of the Office communication.  With regard to requesting reconsideration of the Office's PTA determinations, the rules of practice are also being changed to allow applicants to extend the two-month period for filing a request for reconsideration of the PTA indicated on a patent by an additional five months after the date that the patent was granted under the provisions of 37 C.F.R. § 1.136(a).

The changes to 37 C.F.R. §§ 1.702, 1.703, and 1.705 provided by the interim rule apply to any patent granted on or after January 14, 2013, and the change to 37 C.F.R. § 1.704 applies to any application for which a notice of allowance was mailed on or after April 1, 2013.  The Office will be accepting comments regarding the interim rule until May 31, 2013.  Comments can be sent by e-mail to; by regular mail addressed to:  Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313–1450, marked to the attention of Kery A. Fries, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy; or via the Federal eRulemaking Portal.

Last week, the Office also issued a final rule (78 Fed. Reg. 17871) to implement technical corrections to the AIA with respect to inter partes review proceedings.  In particular, the final rule eliminates the nine-month "dead zone" for filing an inter partes review petition challenging a first-to-invent patent or reissue patent by permitting a petitioner to file an inter partes review petition challenging a first-to-invent patent or reissue patent upon issuance.  Revised 37 C.F.R § 42.102 provides, in part, that:

A petition for inter partes review of a patent must be filed after the later of the following dates, where applicable:
    (1) If the patent is a patent described in section 3(n)(1) of the Leahy-Smith America Invents Act, the date that is nine months after the date of the grant of the patent;
    (2) If the patent is a patent that is not described in section 3(n)(1) of the Leahy-Smith American Invents Act, the date of the grant of the patent[.]

The effective date provision of AIA § 3(n)(1) 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.

Thus, 37 C.F.R § 42.102(1) encompasses first-inventor-to-file (FITF) patents and 37 C.F.R § 42.102(2) encompasses first-to-invent patents.

The final rule implementing technical corrections with respect to inter partes review proceedings took effect on March 25, 2013.


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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