Yesterday, Commissioner Robert L. Stoll talked about the Leahy-Smith America Invents Act at the 21st All Ohio Annual Institute on Intellectual Property here in beautiful, downtown Cincinnati, Ohio.

While only a cursory review, Stoll went down the highlights of the provisions that need to be understood now.

15% Surcharge

The Leahy-Smith America Invents Act (Public Law 112-29) places a 15 percent surcharge on certain patent fees, effective 10 days after enactment (i.e., September 26, 2011).  A listing of the fees is available here.

Also of note is that October 1, 2011, is the start of Fiscal Year 2012.  The money the Patent Office has for the current Fiscal Year 2011 is already allocated.  So, if you hold off on making payments until on or after October 1, the Patent Office can get access to the extra money (if allocated).  Before that date, it’s just money in the government’s general fund.

Prioritized examination provisions –Track I

The Act establishes a prioritized examination fee of $4,800 (above usual fees) with 50% reduction for small entities, in days’ after enactment.

Program Details:

  • Hope to have first action in 3 months
  • Final disposition on average within 12 months of prioritized examination request grant.
  • Must contain no more than 4 independent claims and 3o total claims.

Supplemental Examination

The patent owner may request supplemental examination of a patent to “consider, reconsider, o orrect” information believed to be relevant to the patent.

The USPTO must conduct the supplemental examination and conclude it by issuing a certificate indicating whether the information raises a substantial new question of patentability (SNQ) within three months of the supplemental examination request date.

Third Party Submission of Prior Art

Allows third parties to submit printed publications of potential relevance to examination.

  • must provide, in writing, an explanation of the relevance of the submitted documents.
  • must pay the associated fees.
  • must include a statement by the third party affirming that the submission is being made in compliance with new 35 USC 122(e)

The submission must be made before the earlier of:

  1. the date a notice of allowance ; or
  2. the later of (i) 6 months after the date first published or (ii) the date of the first rejection of any claim in the application.

Inter Partes Review Proceedings

Moves the inter partes standard from a “substantial new question of patentability” to a higher threshold of “reasonable likelihood that the requester would prevail.”

Petitioner may only raise grounds under 35 U.S.C. §§102 and 103 and only on the basis of prior art consisting of patents and printed publications.

Any third party may petition for a review of the patentability of an issued patent later of 9 months of issuance or termination of post-grant review of that patent.  However, the Director may limit the number of petitions to institute IP review during the first 4 years.

Post-Grant Review Proceedings

Creates a nine month window in which the patentability of a patent can be reviewed but requires a threshold showing that it is “more likely than not” that at least one of the claims challenged is unpatentable.

Petitioner may raise any ground that may be raised under paragraph (2) or (3) of 35 U.S.C. § 282 (b), for example 101, 102, 103, 112 except for best mode.  But, the Director may limit the number of petitions to institute IP review during the first 4 years.

**In 18 months we’ll see the First-Inventor-to-File along with Derivation Proceedings.

Don’t Miss:   America Invents Act Webinar

When: Tuesday, September 27, 2011 @ 1:00pm:
Who: Commissioner Robert L. Stoll
How: American Conference Institute
Registration is complimentary

Robert Stoll was sworn in as Commissioner for Patents on October 5, 2009. Prior to that, Mr. Stoll was Dean of Training and Education. Before his appointment as Dean in 2007, Mr. Stoll served as director of the Office of Enforcement for the United States Patent and Trademark Office (USPTO) for five years beginning in 2002. Mr. Stoll holds a bachelor of science in chemical engineering from the University of Maryland. While working at USPTO, he earned a juris doctor from Catholic University and became a member of the Maryland Bar.

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