Further America Invents Act changes take effect on September 16th

September 13, 2012

Overview

Further America Invents Act changes take effect on September 16th

The second round of U.S. Patent Office changes under the America Invents Act goes into effect on September 16, 2012. Noteworthy are changes relating to designation of the Applicant, requirements and content for Oaths and Declarations, third party submissions, increased fees and post grant proceedings.

For patent applications filed on or after September 16, 2012, it will be possible to designate an assignee or other entity as the Applicant. This practice conforms more closely to other countries and is a change from former requirements in which the inventors(s) had to be the Applicant(s). In addition, for patent applications filed on or after September 16, 2012, the requirements for an Oath or Declaration are changing and new forms must be used. The new rules also allow for a Substitute Statement to be signed and filed by someone other than an inventor in certain circumstances such as if an inventor cannot be located, is uncooperative or deceased.

Third party submissions are still allowed, but the timeframes, number of documents that may be submitted, limitations on comments made on the submissions and other requirements for making submissions have changed.

New post grant proceedings will also be available on or after September 16, 2012. The new proceedings include Post Grant review and Supplemental Examination. In addition, Inter Partes Review will replace Inter Partes Reexamination.

U.S. Patent Office fees are changing and many fees have increased. Fees for post grant proceedings are generally substantially higher than the fees for the previous post grant procedures. Further changes to Patent Office fees are expected in the coming months.

A final round of America Invents Act changes goes into effect on March 16, 2013, including adoption of a First to File standard. There may be advantages to filing under the current First to Invent standard and Applicant(s) may wish to consider moving up filings.

If you have any questions regarding changes under the America Invents Act or any other intellectual property matters, please contact your Merchant & Gould attorney.