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Changes Under the America Invents Act

Posted in Patent Counseling & Strategies

Note some changes, effective September 16, 2012, to patent applications and post grant proceedings under the America Invents Act:

 A. For patent applications filed on or after September 16, 2012:

  1. A company (or party the inventors are obligated to assign the invention to) can now act as the applicant, whereas before only the individual inventor(s) could apply. If the assignee elects to file as the applicant, the assignee must execute a power of attorney document.
  2. The executed inventor oath/declaration can be submitted much later in the process at the close of prosecution, in response to a Notice of Allowance. The inventor information must still be provided in an Application Data Sheet at the time the application is filed or within the Missing Parts response period. The inventor oath/declaration require different forms than those used before, and can be included in a combined assignment/declaration document.
  3. Reissue oath/declaration are simplified for reissue applications filed on or after September 16, 2012, but the applicant is required to identify a claim that the applicant seeks to broaden.
  4. Requirements for correction of inventorship and changing the order of inventors have been simplified, and third parties can submit any patent, published patent application, or other printed publication of potential relevance to the examination of an application.

B. For U.S. patents in force on or after September 16, 2012:

  1. Patent owners can request a supplemental examination proceeding to obtain consideration, reconsideration, or correction of information believed to be relevant to the patent, which potentially can shield the patent from unenforceability arising out of inequitable conduct charges surrounding the information at issue.
  2.  Third party requesters for ex parte reexamination must certify that their request is not barred by statutory estoppel arising out of an inter partes review or post-grant review proceeding.
  3.  Inter partes review is more “trial-like”, and conducted in front of the new Patent Trial and Appeal Board within the U.S.P.T.O.