AIA Rules

New rules for U.S. patent prosecution came into force yesterday as part of implementation of the America Invents Act. The new rules relate to inventor oath and declarations, supplemental examination, inter parte review, post grant review and covered business method patents.

September 16, 2012 is one year from the passing of the America Invents Act and was fixed as the date of implementation for several aspects of the changes. Details of the new rules are available through the USPTO website.

New rules relating to inventor oath and declarations are likely of the most interest to patent agents in Canada. Among other changes, they allow an applicant to prosecute a United States application in its own name rather than in the name of the inventors. The USPTO has issued new forms to use for inventor oath and declarations that satisfy the new requirements. The rules also change the procedure for dealing with non-cooperative inventors and in situations where inventors have an obligation to assign (for example by way of an employment contract). The changes also appear to increase the importance of the Application Data Sheet at the time of filing and allows the applicant to defer filing the inventor declarations.

The post-grant procedures also change significantly. The Board of Patent Appeals and Interferences (BPAI) is changing its name to the Patent Trial and Appeal Board (PTAB). For covered business methods, a challenge procedure is available for patent claims that are directed to financial processes that have been asserted in litigation.

Because of these changes in the United States, WIPO is changing its procedures for PCT Applications, particularly the practice of designating the inventors as applicants for the purposes of the United States:

However, for international applications filed on or after 16 September 2012, the assignee or other person to whom the inventor is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, may be the applicant for the purposes of the U.S. designation. This will alleviate many of the difficulties currently encountered as a result of this requirement, for example, obtaining the signatures of all the applicant/inventors in the case of withdrawals – only the applicant’s signature will be required.

The USPTO maintains a microsite on the America Invents Act implementation process.