By Donald Zuhn —

In a press release
issued earlier today, the U.S. Patent and Trademark Office announced that
examination guidelines and the final rule for implementing the
first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act
(AIA) would be published in the Federal Register on February 14 — thirty days
before the FITF provisions take effect on March 16, 2013.  According to the Office's announcement, the
move to a FITF system is "one of the hallmarks of the AIA," and
constitutes "a major step towards harmonization of the U.S. patent system with
those of the United States' major trading partners, allowing greater consistency
in the prosecution and enforcement of U.S. patents."

Although the two notices
will not be published in the Federal Register until Thursday, unpublished copies
of the "Examination Guidelines for Implementing the First Inventor To File
Provisions of the Leahy-Smith America Invents Act" can be found here,
and the final rule entitled "Changes To Implement the First Inventor To
File Provisions of the Leahy-Smith America Invents Act" can be found here.  The unpublished notices come in at 120 and
160 pages, respectively.

The Office's announcement
indicates that the examination guidelines "set[] forth the agency's
interpretation of how the first-inventor-to-file provision alters novelty and
obviousness determinations for an invention claimed in a patent
application," and in particular "inform the public and patent
examiners how the AIA's changes to the novelty provisions of law alter the
scope of what is prior art to a claimed invention and how the new grace period
operates."  Acting Under Secretary
of Commerce for Intellectual Property and Acting Director of the USPTO Teresa
Stanek Rea stated that the "[m]igration to a first-inventor-to-file system
will bring greater transparency, objectivity, predictability, and simplicity to
patentability determinations and is another step towards harmonizing U.S.
patent law with that of other industrialized countries."

The press release also
noted the Office would be providing more information on the
first-inventor-to-file final rules and examination guidelines at a public
training session to be held on Friday March 8, 2013 at the Office's
headquarters in Alexandria, VA.  The
training session will be webcast (with details about the webcast to be announced).

Given the length of the two
notices, we will present an overview of the final rule today and will address
the examination guidelines in a subsequent post.  The final rule notes that AIA § 3 amends U.S.
patent law to:

(1) convert the U.S. patent system from a
"first to invent" system to a "first inventor to file"
system;
(2) treat U.S. patents and
U.S. patent application publications as prior art as of their earliest
effective filing date, regardless of whether the earliest effective filing date
is based upon an application filed in the United States or in another country;
(3) eliminate the
requirement that a prior public use or sale be "in this country" to
be a prior art activity; and
(4) treat commonly owned or
joint research agreement patents and patent application publications as being
by the same inventive entity for purposes of 35 U.S.C. 102, as well as 35
U.S.C. 103.

While the above changes
take effect on March 16, 2013, the final rule points out that the changes
"apply only to certain applications filed on or after March 16, 2013."  This is due to the effective date provision
of AIA § 3(n)(1), which 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.

AIA § 3(a) defines the
"effective filing date" for a claimed invention in a patent or
application for patent as:

(A) if subparagraph (B) does not apply, the
actual filing date of the patent or the application for the patent containing a
claim to the invention; or
(B) the filing date of the
earliest application for which the patent or application is entitled, as to
such invention, to a right of priority under section 119, 365(a), or 365(b) or to
the benefit of an earlier filing date under section 120, 121, or 365(c).

According to the final rule
notice, the rules of practice in title 37 of the Code of Federal Regulations (C.F.R.)
are being revised "for consistency with, and to address the examination
issues raised by, the changes in section 3 of the AIA."  Among the changes to the rules of practice
are the following:

• Where a U.S. patent or
U.S. patent application publication has a prior art effect as of the filing
date of a foreign priority application, a certified copy of the foreign
application or an interim copy of the foreign application must be filed within
the later of four months from the actual filing date of the application filed
under 35 U.S.C. 111(a) or sixteen months from the filing date of the prior
foreign application.  Under some
circumstances, the above requirement will not apply — e.g., the foreign application was filed in a foreign intellectual
property office participating with the USPTO in a bilateral or multilateral
priority document exchange agreement (such offices currently consist of the
European Patent Office (EPO), the Japan Patent Office (JPO), the Korean
Intellectual Property Office (KIPO), and the World Intellectual Property
Organization (WIPO)).

• For a nonprovisional
application filed on or after March 16, 2013 that claims the benefit of the
filing date of an application (i.e.,
foreign, provisional, or nonprovisional application, or international
application designating the U.S.) filed prior to March 16, 2013, wherein the nonprovisional
application filed on or after March 16, 2013 contains, or contained at any time,
a claim to a claimed invention that has an effective filing date on or after
March 16, 2013, the applicant must provide a statement to that effect.  Such statement must be provided within the
later of:

(a) four months from the
actual filing date of the later-filed application,
(b) four months from the
date of entry into the national stage in an international application,
(c) sixteen months from the
filing date of the prior-filed application, or
(d) the date that a first
claim to a claimed invention that has an effective filing date on or after March
16, 2013 is presented in the application.

According to the final
rule, "[t]his procedure will permit the Office to readily determine
whether the nonprovisional application is subject to the changes to 35 U.S.C.
102 and 103 in the AIA."

As a result of public input
regarding the Office's notices of proposed rulemaking and proposed examination
guidelines, the Office made some changes to the Office's proposed rules of
practice pertaining to the FITF provisions of the AIA.  With respect to the requirement to submit a
certified copy of the foreign application, the final rule indicates that the
requirement will not apply in some circumstances, and that applicants will be permitted to
submit an interim copy within the required time frame and then submit a
certified copy before a patent is granted.

With respect to the
requirement that the applicant provide a statement regarding the effective
filing date of the claims in an application, the final rule indicates that "a
statement is required only if a transition application contains, or contained
at any time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013."  The
final rule defines a "transition" application as "a
nonprovisional application filed on or after March 16, 2013, that claims
priority to, or the benefit of the filing date of an earlier application (i.e.,
foreign, provisional, or nonprovisional application, or an international application
designating the United States) filed prior to March 16, 2013."  The proposed rulemaking had also required a
statement if a transition application discloses subject matter not also
disclosed in the prior-filed foreign, provisional, nonprovisional application,
or international application designating the U.S. but did not ever contain a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013.  The final rule
eliminates the requirement to make this latter statement.

As for the changes made to
the proposed rules, the Office states that it "sought to address the
concerns of its stakeholders as expressed in the public comment, and plans to
seek additional public comment on the rules of practice pertaining to the first
inventor to file provisions of section 3 of the AIA after the Office and the
public have gained experience with the rules of practice pertaining to the
first inventor to file provisions in operation."

In addition to a discussion
of the specific rules changes (on pages 17-59 of the notice), the final rule
also addresses the nearly seventy written comments the Office received in
response to its notice of proposed rulemaking (primarily on pages 60 to 106).  Although several comments opposed or expressed
concerns with the statement requirements in the proposed rulemaking, the final
rule maintains the requirement to provide a statement in a transition
application "if the application contains, or contained at any time, a
claim to a claimed invention that has an effective filing date on or after
March 16, 2013."  A statement is no
longer required if a transition application discloses subject matter not also
disclosed in the prior-filed foreign, provisional, nonprovisional application,
or international application designating the U.S.

For the statement that is
still required, the final rule states that "this statement is needed
to assist the Office in determining whether the application is subject to AIA
35 U.S.C. 102 and 103 (an AIA application) or pre-AIA 35 U.S.C. 102 and 103 (a
pre-AIA application)."  The final
rule asserts that "if the Office must determine on its own the effective filing
date of every claim ever presented in an application filed on or after March
16, 2013, that claims priority to or the benefit of an application filed prior
to March 16, 2013, examination costs will significantly increase."  The final rule notes that applicants will not
have to indicate the specific claims that have a post March 16, 2013 effective
filing date, or the effective filing date of each claim, as the Office does not
need this information to determine whether the application is an AIA
application or a pre-AIA application.  In
addition, the final rule specifies that "no statement is required if the
applicant reasonably believes on the basis of information already known to the
individuals identified in § 1.56(c) that the nonprovisional application does
not, and did not at any time, contain a claim to a claimed invention that has
an effective filing date on or after March 16, 2013."

In response to several
comments regarding the mechanism for making the statement, the Office noted
that it is revising the application data sheet to include a check box to allow
applicants to easily indicate whether a transition application contains or ever
contained a claim to a claimed invention having an effective filing date that
is on or after March 16, 2013.

A number of the Office's other responses were particularly enlightening.  For example, in response to a comment
that questioned how long the statement requirement would be applicable, the
Office responded that (emphasis added):

The requirement
for a statement for certain transition applications in §§ 1.55 and 1.78 as
adopted in this final rule is implicated whenever an application filed on or after
March 16, 2013, claims a right of priority to or the benefit of the filing date
of an application filed prior to March 16, 2013.  This
requirement, however, should not affect continuation or divisional applications
because a continuation or divisional application discloses and claims only
subject matter also disclosed in the prior-filed application.  See MPEP § 201.06 (defines divisional
application), and § 201.07 (defines continuation application).  In addition, an application claiming a right
of priority to a foreign application or the benefit of a provisional
application must be filed within one year of the filing date of the foreign or
provisional application.  See 35
U.S.C. 119(a) and 119(e).  In view of the
one-year filing period requirement in 35 U.S.C. 119(a) and 119(e), this requirement
should not affect applications filed after May 16, 2014, that claim only a right
of priority to one or more foreign applications, or that only claim the benefit
of one or more provisional applications (the critical date is May 16, 2014,
rather than March 16, 2014, in view of the
changes to 35 U.S.C. 119 in section 201(c) of the [] Patent Law Treaties
Implementation Act of 2012, Pub. L. 112-211 (2012)).  Therefore,
after March 16, 2014, (or May 16, 2014, the statement required by §§ 1.55 and
1.78 as adopted in this final rule for certain transition applications should
be necessary only in certain continuation-in-part applications.

In response to several
comments requesting that the Office clarify that an amendment to the claims
that lacks support under 35 U.S.C. 112(a) does not convert that application
into an AIA application, the Office responded as follows (emphasis added):

For an application filed on or after March
16, 2013, that discloses and claims only subject matter also disclosed in a
previously filed pre-AIA application to which the application filed on or after
March 16, 2013, is entitled to priority or benefit under 35 U.S.C. 119, 120,
121, or 365, an amendment (other than a preliminary amendment filed on the same
day as such application) seeking to add a claim to a claimed invention that is
directed to new matter would not convert the application into an AIA
application.  35 U.S.C. 132(a) prohibits the introduction of new matter into the
disclosure and thus an application may not actually "contain" a claim
to a claimed invention that is directed to new matter.  The Office notes that the MPEP sets forth the
following process for treating amendments that are believed to contain new
matter: (1) a new drawing should not be entered if the examiner discovers that
the drawing contains new matter (MPEP § 608.02); and (2) amendments to the
written description or claims involving new matter are ordinarily entered, but
the new matter is required to be cancelled from the written description and the
claims directed to the new matter are rejected under 35 U.S.C. 112(a) (MPEP §
608.04).  This process for treating amendments
containing new matter is purely an administrative process for handling an
amendment seeking to introduce new matter into the disclosure of the invention
in violation of 35 U.S.C. 132(a) and resolving disputes between the applicant
and an examiner as to whether a new drawing or amendment to the written
description or claims would actually introduce new matter.

In response to one comment
suggesting that the rules should provide recourse in the situation where there
has been an inadvertent addition of a claim, or a specific reference to a
prior-filed application, that causes the application to be subject to AIA 35
U.S.C. §§ 102 and 103, the Office responded as follows (emphasis added):

There is no provision in the AIA for an application
(or any patent issuing thereon) that contains, or contained at any time, such a
claim or specific reference to be subject to pre-AIA 35 U.S.C. 102 and 103
instead of AIA 35 U.S.C. 102 and 103 on the basis of the claim or specific
reference being submitted by inadvertence . . . .  As discussed previously, however, for an
application filed on or after March 16, 2013, that discloses and claims only
subject matter also disclosed in a previously filed pre-AIA application to
which the application filed on or after March 16, 2013, is entitled to priority
or benefit under 35 U.S.C. 119, 120, 121, or 365, an amendment (other than a preliminary amendment filed on
the same day as such application) seeking to add a claim to a claimed
invention that is directed to new matter would not convert the application into
an AIA application.

In response to a related
comment suggesting that the Office provide an applicant with the opportunity to
cancel any claims to a claimed invention having an effective filing date before
March 16, 2013 from the application, and file a divisional application directed
to the cancelled subject matter to permit applicants to have the claims in the divisional
application examined under pre-AIA 35 U.S.C 102 and 103, the Office responded as follows (emphasis added):

If an application on filing contains at least one claim
having an effective filing date before March 16, 2013, and at least one claim
having an effective filing date on or after March 16, 2013, the application will be examined under AIA
even if the latter claims are cancelled. 
However, if a pre-AIA parent application is pending and an applicant
inadvertently files a continuing application with claims having an effective filing
date on or after March 16, 2013, the applicant could file a continuation or divisional
application from the pre-AIA parent application without any claim to the benefit
of the AIA application and without any claim to a claimed invention having an effective
filing date on or after March 16, 2013.  In
this situation, the continuation or divisional application would be examined as
a pre-AIA application under pre-AIA 35 U.S.C. 102 and 103.

The above responses from
the Office suggest that if an applicant wants to have a transition application
examined as a pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103, the
applicant must include claims directed only to subject matter disclosed in
a previously filed pre-AIA application. 
For this reason, applicants may also want to consider filing only one claim
with a transition application.  In view
of the Office's responses, any other claims or claim amendments should be presented
after
the filing date and not in a preliminary amendment filed on the same day as the
transition application.  This is because
claim amendments or new claims presented in an amendment other than a preliminary amendment filed on the same day as such
application that are not supported by a pre-AIA application would be
treated as new matter.  As the Office indicates
in the final rule notice, "an application may not actually 'contain' a
claim to a claimed invention that is directed to new matter," and
therefore, "a claim to a claimed invention that is directed to new matter
would not convert the application into an AIA application."  The final rule makes clear that if an
application on filing contains at least one claim having an effective
filing date on or after March 16, 2013, the application cannot be examined as a
pre-AIA application under pre-AIA 35 U.S.C. §§ 102 and 103 simply by cancelling
the claim having an effective filing date on or after March 16, 2013.  The final rule notice also makes clear that
if a claim having an effective filing date on or after March 16, 2013 is inadvertently
presented on filing, the application cannot be examined as a pre-AIA application
under pre-AIA 35 U.S.C. §§ 102 and 103.

The final rule concludes
with a discussion of rulemaking considerations (pages 106-128) and the text of
the changed rules (pages 128-160).

By Donald Zuhn —

In December, the U.S.
Patent and Trademark Office published a notice in the Federal Register (77 Fed.
Reg. 72830) seeking public feedback on Request for Continued Examination
(RCE) practice.  The notice provided a
series of questions for which the Office specifically was seeking comment:

(1) If within your
practice you file a higher or lower number of RCEs for certain clients or areas
of technology as compared to others, what factor(s) can you identify for the
difference in filings?

(2) What change(s), if
any, in Office procedure(s) or regulation(s) would reduce your need to file
RCEs?

(3) What effect(s), if
any, does the Office’s interview practice have on your decision to file an RCE?

(4) If, on average,
interviews with examiners lead you to file fewer RCEs, at what point during
prosecution do interviews most regularly produce this effect?

(5) What actions could
be taken by either the Office or applicants to reduce the need to file evidence
(not including an IDS) after a final rejection?

(6) When considering how
to respond to a final rejection, what factor(s) cause you to favor the filing
of an RCE?

(7) When considering how
to respond to a final rejection, what factor(s) cause you to favor the filing
of an amendment after final (37 CFR 1.116)?

(8) Was your after final
practice impacted by the Office’s change to the order of examination of RCEs in
November 2009? If so, how?

(9) How does client
preference drive your decision to file an RCE or other response after final?

(10) What
strategy/strategies do you employ to avoid RCEs?

(11) Do you have other
reasons for filing an RCE that you would like to share?

According to the notice, feedback
regarding RCE practice could be provided by submitting written comments by
e-mail to rceoutreach@uspto.gov; by regular mail to the United States Patent
and Trademark Office, Mail Stop Comments — Patents, Office of Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of
Raul Tamayo; or by using the web-based collaboration tool IdeaScale®, which allows users
to post comments, view and respond to others' comments, and indicate agreement
or disagreement with particular comments.  At the time the notice was
published, the deadline of submitting comments was February 4, 2013.  However, as indicated on the Office's RCE
Outreach webpage,
the deadline for submitting comments has now been extended to March 11, 2013.

In addition to requesting
comments on RCE practice, the notice also indicated that the Office would be
holding five roundtables on the topic. 
The dates and locations of the roundtables have now been announced:

• February 20 — Santa
Clara University School of Law, Santa Clara, CA — Roundtable from 9:00 to 11:00
am (PT) and focus session from 2:00 to 4:00 pm (PT)

• February 26 — Southern Methodist
University, Dedman School of Law, Dallas, TX — Roundtable from 9:00 to 11:00
am (CT) and focus session from 2:00 to 4:00 pm (CT)

• February 28 — New York
University School of Law, New York, NY — Roundtable from 9:00 to 11:00 am (ET)
and focus session from 2:00 to 4:00 pm (ET)

• March 6 — USPTO
Headquarters, Alexandria, VA — Roundtable from 9:00 to 11:00 am (ET) and focus
session from 2:00 to 4:00 pm (ET)

• March 8 — Chicago-Kent
College of Law, Chicago, IL — Roundtable from 9:00 to 11:00 am (CT) and focus
session from 2:00 to 4:00 pm (CT)

The RCE Outreach webpage includes
an invitation to
participate in the roundtable and focus sessions on RCE practice.  According to the invitation, the Office's
current analysis of RCE practice is aimed at "learn[ing] more about the root causes for RCE filings as a
basis for the consideration and design of procedural modifications and
educational initiatives to promote compact prosecution."  The Office notes that "[t]he purpose of
this effort is not to eliminate RCE practice, or in any way disadvantage it,
[b]ut rather, the purpose is to enable applicants to use RCE practice when
needed, while avoiding it where equal or better options are available."  The roundtable/focus session portion of the
RCE Outreach program consists of a series of roundtable discussions (of 75-100
people) and focus sessions (of 10-15 people) to "share ideas, feedback,
experiences, and insights on RCE related prosecution strategies."

Those interested in
participating in any of the roundtables or focus sessions can register by sending an e-mail message to rceoutreach@uspto.gov and
providing the following information:  (1)
Your name, title, and if applicable, company or organization, address, phone
number, and e-mail address; (2) which event you wish to attend; (3) which
session you wish to attend (i.e.,
roundtable and/or focus session); and (4) if you wish to make an oral
presentation at the roundtable, the specific topic or issue to be addressed and
the approximate desired length of your presentation.  Registration for the roundtables/focus
sessions is requested by the following dates: 
Santa Clara, CA — February 15; Dallas, TX — February 22; New York, NY
–February 22; Alexandria, VA — March 1; Chicago, IL — March 1.

Although the Office has
implemented several programs aimed at reducing the RCE backlog (which currently
numbers more than 103,000; see
Patents Dashboard), the Office's
request for comments and its announcement of roundtables/focus sessions on the
topic suggests that the Office may now be turning to its stakeholders for ways to decrease the RCE backlog.  Of course, the Office's efforts to decrease the backlog by raising the cost of filing a first RCE to $1,200, and further raising the cost of filing subsequent RCEs to $1,700 (see "USPTO Publishes Final Rule Setting Patent Fees"), despite the fact that the Patent Public Advisory Committee (PPAC) called such fees "illogical" (see "PPAC Issues Report on USPTO Patent Fees Proposal"), might leave some stakeholders with doubts.

Additional information regarding the Office's
efforts to address the RCE backlog can be found on the RCE Outreach
webpage and in the
Office's Federal Register notice
(see
also "USPTO Seeks Public Feedback on RCE Practice").