August 13, 2012

Press Release, 12-51

USPTO Publishes Final Rules for Supplemental Examination and Inventor’s Oath or Declaration

Changes will implement provisions of the America Invents Act

Washington - The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today that it will publish final rules in the Federal Register on August 14, 2012, to implement two provisions of the Leahy-Smith America Invents Act (AIA) that will improve the patent process for applicants and examiners. The inventor’s oath or declaration offers applicants more flexibility when filing their applications, while the supplemental examination provision will lead to stronger patents that could better resist challenges. Both of these provisions become effective on September 16, 2012. With this publication, all of the patent process rules the USPTO was tasked by the AIA to complete before August 16, 2012, will have been published.

“These final rules help to achieve a 21^st century patent system,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The inventor oath or declaration provision will ease the process for an inventor to file an oath or declaration by reducing the information required and extending the time for filing, and the supplemental examination provision will enable a patent owner to present information to the agency for consideration, reconsideration, or correction, potentially immunizing a patent from a later inequitable conduct challenge premised on that information.”

The inventor’s oath or declaration provision permits a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make an application for patent. The inventor’s oath or declaration final rules also streamline the statements required for an inventor’s oath/declaration, and permit a substitute statement in lieu of an oath/declaration in certain circumstances. Lastly, the inventor’s oath or declaration final rules allow applicants to postpone filing the oath/declaration until the application is otherwise in condition for allowance and to provide for assignments containing oath or declaration statements.

The supplemental examination provision permits a patent owner to present information believed to be relevant to the patent for the Office to consider, reconsider, or correct. A patent owner may use supplemental examination to forestall a subsequent inequitable conduct challenge to the enforceability of the patent during litigation.

The USPTO issued proposed rules for both of these provisions in January 2012 and received helpful public comment from the stakeholder community. Based upon that input, the agency has modified its proposals in preparing the final rules. For example, the agency has increased the number of items of information that a patent owner may submit in a given supplemental examination proceeding as well as simplified the content requirements for a request for supplemental examination.

Additionally and most significantly, the agency initially proposed an inventor only patent filing regime, but based upon public commentary, it has instead adopted in these final rules an assignee or inventor filing regime.

The Office also proposed to require the inventor’s oath or declaration at the time of application filing or shortly thereafter, but rather has adopted the requirement in these final rules that an inventor’s oath/declaration need not be filed until the Office issues a Notice of Allowability.

The USPTO plans to discuss the supplemental examination final rules at a series of “roadshows” scheduled for September 2012 in Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York. Further information about the supplemental examination final rules may be found at http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf. Further information about the inventor’s oath or declaration final rules may be found at http://www.uspto.gov/aia_implementation/InventorOath_Rules.pdf. Further information about the “roadshows” may be found on the AIA micro-site available at http://www.uspto.gov/aia_implementation/roadshow.jsp.

For non-press inquiries about the supplemental examination final rules, contact Cynthia L. Nessler, Senior Legal Advisor, at 571-272‑7724, Pinchus M. Laufer, Senior Legal Advisor, at 571-272-7726, or Kery Fries, Senior Legal Advisor, at 571-272-7757, all from the Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.

For non-press inquiries about the inventor’s oath or declaration final rules, contact Hiram H. Bernstein, Senior Legal Advisor, at 571-272-7707, or Eugenia Jones, Senior Legal Advisor, at 571-272-7727, both from the Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.

Stay current with the USPTO’s implementation of the America Invents Act by subscribing to receive e-mail updates. Visit our Subscription Center at www.uspto.gov/subscribe.

###