The US Patent and Trademark Office (USPTO) published final rules of practice implementing the first-inventor-to-file provision of the Leahy-Smith America Invents Act (AIA). Prior to the passage of the AIA, the USPTO was the only national patent office using a “first-to-invent” system.

The AIA authorizes derivation proceedings before the USPTO, which will ensure that a person will not be able to obtain a patent for an invention that he or she did not actually invent. The AIA also creates a one-year grace period, which will ensure that the patentability of an invention is not defeated by the inventor’s own disclosures, disclosures of information obtained from the inventor, or third party disclosures of the same information as the inventor’s previous public disclosures.

A micro-entity status gives certain applicants a 75% discount on fees as established under Section 10(a). But the discount is not available per the AIA until the USPTO sets or adjusts fees for “filing, searching, examining, issuing, appealing, and maintaining patent applications and patents” using the fee setting authority provided for in Section 10 of the AIA.

The AIA defines a micro entity as an applicant who certifies that he/she:

  • Qualifies as a small entity;
  • Has not been named as an inventor on more than 4 previously filed patent applications;
  • Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and
  • Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

The USPTO will provide more information on the first-inventor-to-file final rules and examination guidelines at a public training session to be webcast on Friday March 8, 2013 at the USPTO’s headquarters in Alexandria, Virginia.

The Federal Register publication – Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act – can be found at http://federalregister.gov/a/2013-03453 and the Federal Register publication – Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act: Examination Guidelines.

The public may contact the AIA Helpline at 1-855-HELP-AIA (1-855-435-7242) or the AIA Email at HELPAIA@uspto.gov for answers to first-inventor-to-file and other AIA related questions.

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