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USPTO Publishes Three Notices of Proposed Rulemaking in the January 5, 2012 Federal Register

  • 01.05.12
  • Sterne, Kessler, Goldstein & Fox

The United States Patent and Trademark Office has published three Notices of Proposed Rulemaking as listed below.

1.  Changes To Implement Miscellaneous Post Patent Provisions of the Leahy-Smith America Invents Act. 

Brief Summary: 

SUPPLEMENTARY INFORMATION: Section 6 of the Leahy-Smith America Invents Act replaces the current inter partes reexamination proceedings with inter partes review proceedings, and creates new post grant review proceedings. See Public Law 112-29, 125 Stat. 284 (2011). Section 6 of the Leahy-Smith America Invents Act also provides for an estoppel that may attach with respect to ex parte reexamination based on an inter partesreview or post grant review proceeding. The Office is proposing to revise the rules of practice in title 37 of the Code of Federal Regulations (CFR) to implement these post-patent provisions, along with changes in nomenclature pertaining to the renaming of the ``Board of Patent Appeals and Interferences'' as the ``Patent Trial and Appeal Board'' and the replacement of references to interference proceedings with references to derivation proceedings. The post grant review, inter partes review, and derivation provisions of sections 3 and 6 of the Leahy-Smith America Invents Act will be implemented by separate rulemakings.


2.   Changes To Implement the Preissuance Submissions by Third Parties Provision of the Leahy-Smith America Invents Act

Brief Summary:

This provision provides a mechanism for third parties to contribute to the quality of issued patents by submitting to the Office, for consideration and inclusion in the record of patent applications, any patents, published patent applications, or other printed publications of potential relevance to the examination of the applications. A preissuance submission may be made in any non-provisional utility, design, and plant application, as well as in any continuing or reissue application. A third-party preissuance submission must include a concise description of the asserted relevance of each document submitted and be submitted within a certain statutorily specified time period. The third party must submit a fee as prescribed by the Director and a statement that the submission complies with all of the statutory requirements. The third-party preissuance submission provision of the Leahy-Smith America Invents Act is effective on September 16, 2012, and applies to any application filed before, on, or after September 16, 2012.


3.  Implementation of Statute of Limitations Provisions for Office Disciplinary Proceedings

Brief Summary:

The Leahy-Smith America Invents Act (AIA) requires that disciplinary proceedings be commenced not later than the earlier of the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the United States Patent and Trademark Office (Office or USPTO), as prescribed in the regulations governing disciplinary proceedings. The Office initiates disciplinary proceedings via three types of disciplinary complaints: complaints predicated on the receipt of a probable cause determination from the Committee on Discipline; complaints seeking reciprocal discipline; and complaints seeking interim suspension based on a serious crime conviction. This notice proposes that the one-year statute of limitations commences, with respect to complaints predicated on the receipt of a probable cause determination from the Committee on Discipline, the date on which the Director, Office of Enrollment and Discipline (OED Director) receives from the practitioner a complete, written response to a request for information and evidence; with respect to complaints based on reciprocal discipline, the date on which the OED Director receives a certified copy of the record or order regarding the practitioner being publicly censured, publicly reprimanded, subjected to probation, disbarred, suspended, or disciplinarily disqualified; and, with respect to complaints for interim suspension based on a serious crime conviction, the date on which the OED Director receives a certified copy of the record, docket entry, or judgment demonstrating that the practitioner has been convicted of a serious crime.

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