USPTO Implements Seven Provisions of America Invests Act, Announces New Web-based Tool

On September 17, 2012, the U.S. Patent and Trademark Office (USPTO) implemented seven provisions of the Leahy-Smith America Invents Act of 2011 (AIA) including:

• Three new administrative trial provisions will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent;
• The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the USPTO in a new procedure that may protect the patent from an inequitable conduct charge;
• The inventors oath and declaration provision that for the first time allows assignee filing of a patent application; and,
• The citation of prior art and written statements provision will enable the USPTO to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other proceedings.

The new rules are intended to spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Other provisions of the AIA will go into effect on March 16, 2013, including the shift to a first-inventor-to-file system. Read the press release...

Throughout September, a series of roadshows are being hosted by the USPTO to share information about new provisions and answer public questions. The agency also will discuss proposed rules for the first-inventor-to-file provision. Copies of the written materials will also be made available on the USPTO micro-site.

The USPTO also recently announced a new, user-friendly, web-based search tool to make its patent and trademark examining manuals more accessible to the public. Similar to popular internet search engines, the Manual of Patent Examining Procedure (MPEP) and Trademark Manual of Examining Procedure (TMEP) search tools will allow individuals to navigate through the manuals using a table of contents or perform searches ranked by relevance and search terms highlighted in the body of the document. Users will have the ability to print or export sections to PDF using typical browser functionality. The tools are available at tmep.uspto.gov and mpep.uspto.gov.