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August 15, 2012

New Provisions of America Invents Act Go into Effect in September

By Ed Silverstein, TMCnet Contributor

New provisions of the America Invents Act (AIA) go into effect next month. This week, the U.S. Patent and Trademark Office released some of the new rules included in the AIA.

The new rules relate to regulations on obtaining a patent, expanding administrative review of issued patents, and more opportunities for the public to take part in the patenting process.

"We are generally pleased with the final rules issued by the USPTO today," Q. Todd Dickinson, executive director of the American Intellectual Property Law Association (AIPLA), said in a statement released on Tuesday. "They are a major step forward in implementing the landmark legislation under the AIA.”



“We also applaud the flexibility shown by the USPTO in modifying proposed rules in reaction to user comments in several areas, such as the oath and declaration and the statute of limitations on disciplinary procedures, which clearly resulted in welcome modifications to the proposed rules,” he added. “While some of the issued rules do not provide maximum flexibility and efficiency of process on behalf of the users of the patent system, we remain optimistic that the USPTO will make adjustments as experience with the rules demonstrates their necessity.”

In his commentary, Dennis Crouch said in a Patently-O blog post that the new rules implemented on Sept. 16 will result in the “patent applicant” to be linked to ownership – such as corporate owners – not inventors.

“Thus, any juristic entity who can show a proprietary interest will be permitted to file and prosecute a patent application as the patent applicant,” he said.

He also points out there has been a drop in the percentage of inventor-owned patents. 

This week, six notices were published in the Federal Register on such topics as: inventor's oath or declaration provisions; supplemental examination and revise reexamination fees; inter partes review and post-grant review proceedings; office patent trial practice guide; rules of practice for the Patent Trial and Appeal Board; and post-grant review for covered business method patents.

On Aug. 22, the AIPLA will hold a webinar "The Final USPTO AIA Rules: What You Need To Know," with Janet Gongola, USPTO patent reform coordinator.

In December, the AIA led to many questions about legal and practical implications on those involved in patent litigation, TMCnet said.

Also, between Oct. 2 and Oct. 5, TMCnet will hold a SUITS Conference (Synopsis (News - Alert) under IP/Patents Telecom Sourcing Conference - West 2012) at the Austin Convention Center, Austin, Texas, to advance the knowledge of innovators in telecommunications including developers, implementers, licenses, licensors, end users, carriers and enterprise patents.

Attendees will learn how to be aware and prepare to protect their most valuable assets - individual and company patents and intellectual property stored in the Patent Eco System or being held for security.

There will be interactive round table discussions, as well as expert presenters from both the public and private sectors.

For registration, click here.


Want to learn more about patents in the telecom industry? Then be sure to attend
Synopsis Under IP/Patents Telecom Sourcing Conference (SUITS), collocated with ITEXPO West 2012 taking place Oct. 2-5, in Austin, TX.  Stay in touch with everything happening at SUITS. Follow us on Twitter.




Edited by Braden Becker
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