USPTO Updates

Since the enactment of the Leahy-Smith America Invents Act (AIA) last September, the USPTO has been busy creating new rules, procedures, and guidelines as required under the Act. It has also established a helpful AIA implementation website, where updates on its ongoing efforts are continually presented and which also contains a link offering an email subscription to related updates. Following are some recent noteworthy developments in this regards that may impact your business or practice.

  •  The USPTO announced that “Track One” prioritized examination is now available in accordance with the AIA. Under this mechanism, “final disposition” of an application is targeted to occur within 12 months from filing. “Final disposition” may be defined in several ways including mailing of a Notice of Allowance, mailing of a final Office Action, abandonment of an application, filing of an appeal, or filing of a Request for Continued Examination. The fee for entry into the program is $4,800 ($2,400 for small entities) in addition to all normal fees. The USPTO also announced that Track I Prioritized Examination is now also available for Requests for Continued Examination (RCEs).
  • The USPTO announced that the $400 fee for non-electronic application filing required by the AIA has been implemented.
  • The USPTO announced that it had “published four Notices of Proposed Rulemaking regarding implementation of various provisions of the” AIA:
    1. Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act (available here);
    2. Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act (available here);
    3. Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings (available here); and
    4. Changes To Implement the Inventor’s Oath or Declaration Provisions of the Leahy-Smith America Invents Act (available here).
  • The USPTO announced proposed rules for supplemental examinations and changes to ex parte reexamination fees. Note that, under the proposed fee changes, the fee for filing a request for an ex parte reexamination would increase from the present fee of $2,520 to $17,500.
  • In an effort to streamline and simplify ex parte appeals before the Board of Patent Appeals and Interferences, the USPTO issued final rule amendments pertaining to such practice.
  • In exercising the fee-setting authority accorded it by the AIA, the USPTO announced the publication of fees for patent-related services. In accordance with its notice of public hearings on the issue (available here), the USPTO published a Table of Patent Fee Changes which presents its proposed fee schedule (available here).