How can the America Invents Act give your patent searches an edge?

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As most of our audience knows, certain provisions of the recent legislation known as the America Invents Act (hereafter “AIA”) are about to go into effect.  To educate patent practitioners about the upcoming changes, the USPTO is hosting a series of AIA Roadshow programs throughout the country. I was recently given the opportunity to attend a Roadshow on-campus in Alexandria, VA on September 12th.  This program was jam-packed full of information about the significant procedural changes that will take place as the legislation is implemented – some of which came into effect as early as September 16th, 2012.

Read on to discover the changes in store, and how you can take advantage of them!

I wish I could condense the entire day’s proceedings into one blog post, as there was a lot of excellent information – but for now, I’m going to focus on some changes that are of particular interest to patent searchers.  One proviso – I’m not an attorney or patent practitioner, and although the information below is correct to the best of my knowledge, I may have lost some nuance due to my lack of background.  I trust our readers to add their thoughts into the comments section!

Preissuance Submission

Some really juicy material came from a discussion of the new preissuance submission procedure, which went into effect on September 16th, 2012.  This new option allows any third party to submit relevant art for consideration during the examination period.  In theory, companies might use this to halt the grant of a competitor’s patent by pre-emptively submitting valid prior art, saving the examiner time and possibly avoiding a court case.  The preissuance submission rules were influenced by the lessons learned from peer-to-patent pilot program.  The rules are designed to save examiners time, not add to their workload.  Thus, the procedure has a few built-in safeguards to prevent overload.

Through this rule, any third party may make a submission of material that has potential relevance to the case, within the following parameters:

The submission must include a concise written description of the asserted relevance of each individual submitted item.  Stress was placed on the requirement that the relevance statement be concise, and that violating statements would be declared noncompliant and never received by the examiner.

The third party will not be able to respond to the examiner’s treatment of the submission – it’s a one-time submission, not an ongoing conversation.

A fee is required.  However, the fee will be waived if the submission consists of 3 or fewer documents, and the third party makes a statement that this is the “first and only” intended submission (an incentive not to waste the examiner’s time).

Statutory time period rules about when the submission may be made either before 6 months after the date of first publication, or the date of first rejection, whichever is later – and *cannot be made after allowance.*

Very notably, the submission must be signed by the agent who submits the material to the office – but the real party of interest can remain anonymous.

Of particular note to searchers: the submitted documents will be printed on the patent face, and treated in the same manner as documents disclosed by the applicant at the time of filing (the Information Disclosure Statement, or IDS).

One other provision of the new law is the mechanism for a third party to initiate a post-grant review to challenge patent claims.  I won’t cover that topic extensively here, as it’s been thoroughly discussed in other forums, but it’s worth noting that unlike the preissuance submission, post-grant review requests cannot be filed anonymously.

Patent Owner Claim Scope Statements

Another fascinating new document that we’ll see in our file histories is the new “patent owner claim scope statement.“  This is a written statement by the applicant about the intended scope of the patent claims.  The examiner will see the statement, but s/he will still search on the claims using their broadest reasonable interpretation – however, the statement may inform his/her interpretation of the claims.

Of particular note to searchers: I’m simplifying a few details, but the upshot is that this statement will likely become part of the file history.  While non-attorneys should never attempt to interpret or define the scope of patent claims, this document may give attorneys added insight into what subject features may need to be stressed during a search.

Also note that the USPTO may take the claim scope statement into account after ordering an ex parte or inter partes reexamination or instituting an administrative trial, but may not consider it when deciding to initiate such a proceeding.

Some Other Tidbits

The day also included a discussion of inventor’s oath and declaration requirements.  While I didn’t expect much to be relevant to patent searchers, I was surprised to learn that the term “applicant” is taking on a new meaning in the US.  “Applicant” is no longer synonymous with “inventor.” As of September 16th, the “applicant” may be the inventor, the assignee, the “obligated assignee” (defined as the entity “to whom the inventor is obligated to assign the invention”), or any entity who “otherwise shows sufficient proprietary interest in the matter.”  In the past, these agents could apply for a patent only on the behalf of an inventor – but now, the patent can be granted directly to them (to “the real party in interest”).

What’s unclear to me is whether we’ll actually start seeing separate inventor, applicant and assignee data present in the bibliographic or legal status data of US documents.

Anyone else know of an advantage the AIA will give our searches?  Educate me in the comments!

Technical Translations from Landon IP

This post was contributed by Landon IP Librarian Kristin Whitman. The Intellogist blog is provided for free by Intellogist’s parent company, Landon IP, a major provider of patent search, technical translation, and information services.

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