First-Inventor-to-File
America Invents Act Proposed Rules and Examination Guidelines

On July 26, 2012, the U.S. Patent and Trademark Office (USPTO) published proposed rules and examination guidelines for the first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act (AIA). 77 Fed. Reg. 43,742 (July 26, 2012); 77 Fed. Reg. 43,759 (July 26, 2012). The publication of the proposed rules and examination guidelines opens a public-comment period that runs until October 5, 2012. During this time period, the USPTO seeks the benefit of the public’s view on the implementation of the FITF provisions of the AIA. Comments can be submitted electronically or by mail and will be available for public inspection at the USPTO’s Alexandria, VA, location or on the USPTO’s website (http://www.uspto.gov).

Section 3 of the AIA converts the U.S. patent system from a “first-to-invent” to an FITF system. The FITF provisions take effect on March 16, 2013. The proposed changes detail the rules of agency practice for implementing the AIA. Namely, the proposed rules make changes to title 37 of the Code of Federal Regulations that are consistent with, and address the examination issues raised by, the changes in section 3 of the AIA.

Generally, the proposed rules encompass the following changes:

1. USPTO adds definitions from the AIA to the rules of practice.
2. USPTO amends existing affidavit and declaration provisions for showing attribution of a disclosure to an inventor or joint inventor, prior disclosure, or derivation under 35 U.S.C. § 102(b).
3. USPTO provides certain time limits for making a claim to priority and filing a certified copy of a foreign application.
4. USPTO eliminates provisions directed to statutory invention registrations.
5. USPTO includes additional requirements for nonprovisional applications filed on or after March 16, 2013, that identify whether the application is subject to 35 U.S.C. §§ 102 and 103 as amended by the AIA.

The proposed guidelines, which were also published with the proposed rules, detail the agency’s interpretation of 35 U.S.C. §§ 102 and 103 as amended by the AIA. The proposed guidelines also inform the public and USPTO personnel on how the USPTO’s implementation of the FITF provisions will impact the Manual of Patent Examining Procedure. Notably, the proposed examination guidelines explain the type of prior art that can preclude a patent under 35 U.S.C. § 102(a) and the type of prior art that falls under the exceptions of § 102(b).

In September 2012, the USPTO will discuss the FITF proposed rules and examination guidelines at various cross-country road shows in Alexandria, VA; Denver, CO; Detroit, MI; Houston, TX; Los Angeles, CA; Minneapolis, MN; and New York City, NY. Specific information regarding those road shows can be found at http://www.uspto.gov/aia_implementation/roadshow.jsp.