Frequently Asked Questions

Submitting Comments on the AIA

Question C1:  If I would like to submit comments on the Notices of Proposed Rule Making that the Office will be issuing, but cannot finish my comments by the due date, may I have an extension to submit them?

Due to the tight enactment time frames of the AIA and the rule making process, the Office does not anticipate being able to accommodate extension requests to submit comments. 

Question C2:  Do I have to wait for a Notice of Proposed Rule Making to comment on a specific provision of the AIA? 

No.  The Office encourages you to submit your comments to aia_implementation@uspto.gov and requests that your subject line reference the topic or AIA provision(s) that your comments address.  Given the tight implementation time frames resulting from the AIA, preliminary input from our stakeholders and the public on implementation of the key provisions would facilitate our review process.

Question C3:  I already submitted comments through the aia_implementation@uspto.gov email address.  May I also submit comments in response to a Notice of Proposed Rule Making on the same topic(s)?

Yes.  Comments submitted through the aia_implementation@uspto.gov email address are being considered before the Office issues a Notice of Proposed Rule Making (NPRM).  Timely filed comments responding to a NPRM should address what is promulgated in the proposed rules.  These comments should be submitted to the email address designated in the NPRM.

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Best Mode

Question BM1:  What is the effective date for the Best Mode provision in the AIA?

The effective date for the Best Mode provision in the AIA is September 16, 2011.

Question BM2:  Does AIA’s amendment to 35 U.S.C. 282(a)(3) impact current patent examination practice regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112?

No.  As this change is applicable only in patent validity or infringement proceedings, it does not change current patent examination practices set forth in MPEP § 2165.

Question BM3:  What is the impact of AIA’s amendment to 35 U.S.C. 282(a)(3) concerning Best Mode?

The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.  As stated above, this new practice does not affect the patent examination practice.

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Derivation Proceedings

Question DER1: What is the effective date for the derivation provision in the AIA?

The effective date for the derivation provision in the AIA is March 16, 2013. 

Question DER2:  What are the requirements for seeking a derivation proceeding?

A derivation proceeding requires that an applicant for patent file a petition to institute the proceeding.  The petition must set forth with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner.  The petition must be made under oath and supported by substantial evidence.  The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention. 

Question DER3:  What statutory requirements must a petitioner meet in a petition for a derivation proceeding?

In a petition for a derivation proceeding, the petitioner must (i) identify which application or patent is disputed; and (ii) provide at least one affidavit addressing communication of the derived invention and the lack of authorization for filing the earlier application.

Question DER4: What is the standard for instituting a derivation proceeding and who will decide whether the standard is met?

A derivation may be instituted where the petition sets forth a basis for finding that the inventor named in an earlier application derived the claimed invention and there is substantial evidence to support the allegations raised in the petition.  The Board of Patent Appeals and Interferences (soon to be renamed the Patent Trial and Appeal Board) will decide petitions for derivation and conduct any ensuing derivation proceeding.

Question DER5:  How will the Board conclude a derivation proceeding?

The AIA provides that where a derivation proceeding is instituted and not dismissed, the Board shall issue a written decision that states whether an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application without authorization.

Question DER6:  Can a party to a derivation proceeding appeal the Board’s final decision?

Yes, a party dissatisfied with a final decision in a derivation proceeding may appeal to district court or the Federal Circuit. 

Question DER7:  In lieu of a derivation, can the parties to a derivation proceeding resolve inventorship in any other way?

Yes, the parties to a derivation proceeding may resort to binding arbitration to determine inventorship. 

Question DER8:  Can the parties to a derivation proceeding engage in settlement?

Yes, the AIA permits the parties to a derivation proceeding to settle.  A settlement in a derivation proceeding will be accepted by the Board unless inconsistent with the evidence of record. 

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Fees

Prioritized Examination

Question FEE1:  How much is the fee for prioritized examination and when will it be effective?

The new fee for prioritized examination will be effective at 12:00 a.m. on Monday, September 26, 2011.  The fee rates for large and small entities are listed below.  Like all fees, the USPTO is not authorized to apply a micro entity discount to the prioritized exam fee without setting the fee using the section 10 fee setting process.

CFR Section	Fee Code	Description	9/26/2011 Fee (i.e., post-AIA enactment)
1.17(c)	1817	Request for Prioritized Examination	$4,800.00
1.17(c)	2817	Request for Prioritized Examination	$2,400.00

Question FEE2:  Are there any other fees required upon filing a Request for Prioritized Examination (Track I)?  What happens if one of the required fees is not present upon filing?

Consult the current fee schedule available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp for the correct fee amounts.  The fees required to be paid upon filing for prioritized examination are:

i.    Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c).

ii.   Search fee, as set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m).

iii.  Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).

iv.  Publication fee, as set forth in 37 CFR 1.18(d).

v.  Track I processing fee, as set forth in 37 CFR 1.17(i).

vi.  Track I prioritized examination fee of $4800.00 ($2400.00 for small entities).

vii.  If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).

viii. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h).

ix.  If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i).

If any fee is unpaid at the time of filing of the application, the request for Prioritized Examination will be dismissed.  However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees. 

15% Surcharge

Question FEE3:  On what date will I have to begin paying the 15% increase on patent fees?

The 15% increase in fee rates will become effective at 12:00 a.m. on Monday, September 26, 2011.

Question FEE4:  I would like to ensure that I am paying the proper amount.  How do I determine the new fee rates after applying the 15% increase?

The specific fees that will be increased by 15% are listed in the table here.  The entire updated fee schedule can be found at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp.

Question FEE5:  Are there any patent fees that will not be increasing by 15%?

Yes.  Fees such as international stage PCT fees, certain petition fees, enrollment fees, and service fees will not be increasing by 15%.

Question FEE6:  What will happen if I forget to pay the increased fee amount on or after September 26, 2011?

The applicable fee amount is the amount in effect on the day the fee is paid.  If the applicable fee amount is not paid, the USPTO will treat the submission as having an insufficient payment of fees.  Applicants are encouraged to provide authorization in the application file to charge fees to a specified Deposit Account to avoid insufficient payment of fees.

Question FEE7:  On June 27, 2011, the USPTO issued a notice of proposed rulemaking to adjust certain patent fee amounts for fiscal year 2012 to reflect fluctuations in the Consumer Price Index (CPI).  Does the office plan to implement this increase in addition to the 15% patent fee increase in the AIA?

No.  Given the timing of the enactment of the AIA so close to the beginning of fiscal year 2012, the USPTO does not plan on implementing the CPI for fiscal year 2012.

Question FEE8:  Did the 15% increase to certain patent fees impact the FY 2011 fee collections?

Yes, the USPTO collected and was able to spend almost $5 million more in patent fees during FY 2011 related to the 15% fee increase and the prioritized examination   fee.  However, the timing of enactment of the AIA led to an unfortunate rush on fee payments during the 10 days from AIA enactment (September 16, 2011) to the fee increase effective date (September 26, 2011).  Prior to enactment of the AIA, the USPTO estimated that it would collect approximately $70 to $80 million more than the $2.090 billion it was authorized to spend.  The rush on fee payments triggered an additional $139 million in FY 2011 fee collections above the $2.090 billion authorized level.  The total $209 million in fees above the USPTO’s FY 2011 appropriation are not available for the USPTO to spend on operations.  The USPTO estimates that about half of these unavailable fees are collections that otherwise would have been received in FY 2012.

Electronic Filing Incentive

Question FEE9:  When will the USPTO begin collecting the additional $400 (and $200 for small entity) for an original patent application (except for a design, plant, or provisional application) that is not filed electronically?

This new fee will be effective at 12:00 a.m. on Tuesday, November 15, 2011.  This fee applies to a patent application filed by mail, rather than via the Office’s electronic filing system (EFS-Web).  This includes PCT international applications filed with the USPTO as the Receiving Office.  All applications filed by mail or hand delivery on or after November 15, 2011, must include the additional $400 ($200 for small entity) fee.  Requests for Continued Examination (RCE) are not subject to the additional $400 ($200 for small entity) fee.

Fee Setting Authority

Question FEE10:  When will the USPTO set or adjust fees using the fee setting authority outlined in section 10 of the Act?

The USPTO published a notice of proposed rulemaking (NPRM) to set and adjust patent fees using the section 10 fee setting authority.  The NPRM and supporting materials are available at http://www.uspto.gov/aia_implementation/fees.jsp#heading-1.  The public comment period ends on November 6, 2012.  The Office will issue a final rulemaking after considering the comments from the public.  The Office expects most of the new fees could be effective during the Spring of 2013.

Question FEE11:  Will I have an opportunity to provide input into the fee amounts that might be revised using the USPTO’s new fee setting authority under section 10 of the AIA?

When the USPTO sets fees using the authority outlined in section 10 of the AIA, the public will have at least three (3) opportunities to provide suggestions and comments.  The first opportunity is now.  While the USPTO is deliberating internally about fees, you can provide suggestions or ideas for the USPTO to consider by emailing the USPTO at aia_implementation@uspto.gov.  The second opportunity will be during the public hearing held by the Patent Public Advisory Committee (watch for the date(s) on our AIA calendar of events).  The third opportunity will be during the 60-day public comment period after the USPTO publishes the notice of proposed rulemaking.

Micro Entity

Question FEE12:  If I meet the micro entity of the AIA, will I be able to pay a micro entity fee beginning on the date of enactment – September 16, 2011?

No.  The AIA does not permit the USPTO to apply the 75% micro entity fee discount until the micro entity fee for a specific item is set or adjusted using the fee setting authority provided in section 10 of the Act.

Miscellaneous

Question FEE13:  Will fees collected in FY 2011 in excess of USPTO’s appropriations be deposited into the Reserve Fund created by Section 22 of the Act?

No, the reserve fund is only effective upon the first day of fiscal year 2012 (October 1).  So any fees collected in excess of USPTO’s appropriations in FY 2011 (see Question FEE12) would not be deposited in this new fund.  Any fees collected in excess of FY 2012 amounts this coming year will be deposited in the new fund and, assuming the USPTO receives appropriations language giving the agency the authority to access these fees, would be available to the USPTO subject to submission of a reprogramming request.

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First Inventor to File

Question FITF1:  What is the effective date of the First Inventor to File provision of AIA?

The effective date for the First Inventor to File provision of AIA is March 16, 2013.

Question  FITF2:  I’m an independent inventor planning on filing a new nonprovisional patent application on October 1, 2011.  Will my patent application be subject to the first-inventor-to-file provisions? 

No.  The first-inventor-to-file provisions become effective on March 16, 2013.  Thus, an application filed before that date would not be subject to the first-inventor-to-file provisions.  The application will be treated under the first-to-invent provisions of the law in effect on September 15, 2011.

Question FITF3:  Once the first-inventor-to-file provisions take effect on March 16, 2013, would someone who copies my idea and files a patent application on the subject matter before I do be entitled to a patent?

No.  Only inventors are entitled to a patent.  Someone who copies another’s idea cannot be the inventor.  

Question FITF4:  My co-inventor disclosed our invention at a trade show one month before the filing date of our application.  Will that disclosure prevent us from obtaining a patent?

No.  Regardless of whether the application was filed before or after the first-inventor-to-file provisions take effect on March 16, 2013, disclosure one month prior to a filing date is not prior art to the claimed invention by virtue of a one year grace period.

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Inter Partes Reexamination

Question R1:  What is the effective date of the provisions effecting inter partes reexamination?

The effective date of the inter partes reexamination provisions is September 16, 2011.

Question R2:  Did the AIA change the standard for inter partes reexamination? 

Yes.  Section 6 of the AIA elevates the standard for granting a request for inter partes reexamination.  Under the new standard, the information presented in an inter partes reexamination request must provide a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request.  The standard for ex parte reexamination remains unchanged.    

Question R3:  If a request for inter partes reexamination was filed before the enactment date of the AIA, but a determination on the request has not yet been issued, which standard will be applied in determining whether to grant inter partes reexamination?

The Substantial New Question of patentability (SNQ) standard is applicable in determining whether the request for inter partes reexamination will be granted for any inter partes reexamination proceeding with a request filed prior to the date of enactment of the AIA (i.e., September 16, 2011). 

Question R4:  If a request for inter partes reexamination was granted under the SNQ standard, will the resulting proceeding continue until its conclusion under the SNQ standard?

Yes.  If reexamination was ordered based on the SNQ standard, the SNQ standard will continue to be applied until the conclusion of the proceeding.

Question R5:  What is inter partes review and when is it available?

Inter partes review replaces inter partes reexamination as an avenue for a third party’s patentability challenge and the provision in the AIA for inter partes review is effective on September 16, 2012.

Question R6:  When inter partes review under section 6 of the AIA takes effect on September 16, 2012, will pending inter partes reexaminations be converted to  inter partes review proceedings?

No.  Pending inter partes reexaminations will not be converted into inter partes review proceedings.  Proceedings for inter partes reexamination filed prior to September 16, 2012, will proceed to conclusion even if the proceedings last beyond September 16, 2012

Question R7:  If a request for inter partes reexamination is filed on September 16, 2012, how will it be treated?

Any request for inter partes reexamination filed on or after September 16, 2012, will not be granted.   

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Inter Partes Review

Effective Date

Question  IPR1:   What is the effective date for the inter partes review provision in the AIA?

The effective date for the inter partes review provision in the AIA is September 16, 2012. 

Eligibility

Question IPR2:    What patents are eligible for an inter partes review?

All patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35. 

Petition for an Inter Partes Review

Question IPR3:  When can a petitioner bring an inter partes review for a patent?

A petition for inter partes review cannot be filed until after the later of:
(i) 9 months after the grant of a patent or issuance of a reissue of a patent; or
(ii) the date of termination of any post-grant review of the patent. 

Question IPR4:    Who may file for an inter partes review?

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for an inter partes review of the patent.

Question IPR5: On what grounds may a petitioner challenge a patent in an inter partes review?

A petitioner for inter partes review may request to cancel as unpatentable one or more claims of a patent on a ground that could be raised under 102 or 103 and only on the basis of prior art consisting of patents or printed publications.

Question IPR6:  How does a party request an inter partes review?

To initiate an inter partes review, a party must file a petition establishing certain statutory requirements.

Question IPR7:    What statutory and regulatory requirements must a petitioner meet in a petition for an inter partes review?

In a petition for an inter partes review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon.  The petition must be accompanied by a fee.  In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.

Question IPR8:  What is the fee for filing an inter partes review petition?

The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.  The fee for filing a petition challenging the patentability of up to 20 claims is $27,200.  For each additional claim challenged, there is a fee of $600.00.

Question IPR9: Can a patent owner respond to a petition for an inter partes review?

Yes, a patent owner may file a preliminary response to the petition to provide reasons why no inter partes review should be instituted.

Question IPR10:  How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?

A patent owner will have three months to submit a preliminary response.

Question IPR11:  Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?

No, a patent owner does not have to file a preliminary response.  If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner.  The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

Question IPR12:  May a patent owner challenge the standing of a petitioner in the preliminary response?

A patent holder may challenge the standing of a petitioner in the preliminary response.  For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petition or that the petitioner otherwise is estopped from challenging the patent owner’s claims.

Standard to Institute an Inter Partes Review

Question IPR13:    What is the standard for instituting an inter partes review and who will decide whether the standard is met?   

The petitioner must demonstrate that there is a reasonable likelihood that he/she would prevail as to at least one of the claims challenged to trigger an inter partes review.  The Board of Patent Appeals and Interferences (soon to be renamed the Patent Trial and Appeal Board) will decide petitions for inter partes review and conduct any ensuing reviews.  In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office. 

Question IPR14:  Can a party request rehearing of the Board’s decision denying its petition?

Yes, a party may request rehearing of the Board’s decision.  The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

Question IPR15:  Can a party appeal the Board’s decision whether to institute an inter partes review?

No, a party is statutorily precluded from appealing the Board’s decision whether to institute an inter partes review.

Trial

Question IPR16:  If an inter partes review is instituted, can the patent owner respond during the review?

Yes, a patent owner may file a response after the institution of an inter partes review.

Question IPR17:  If an inter partes review is instituted, can the patent owner amend the claims during the review?

A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during an inter partes review.  Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims. 

Question IPR18:  How much time does a patent owner have to file a response and/or amendment after review is instituted?

The schedule for each proceeding will be set by the Board.  Ordinarily, a patent owner will have three months to file a response and/or amendment.

Question IPR19:  If an inter partes review is instituted, can the petitioner file additional information?

Yes, a petitioner may supplement information provided in the petition for inter partes review by filing motion within one month of the date trial is instituted. 

Question IPR20:  May a party submit supplemental information after one month from institution?

A party may be authorized to file a motion to submit supplemental information belatedly.  A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

Question IPR21:  How can a party to an inter partes review protect confidential information?

The AIA provides that the file of an inter partes review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal.  The AIA also provides for protective orders to govern the exchange and submission of confidential information. 

Question IPR22:  Is discovery permitted during an inter partes review?

The AIA authorizes the Office to set standards and procedures for the taking of discovery during an inter partes review, including that discovery be limited the depositions of witnesses submitting affidavits or declarations and what is otherwise necessary in the interest of justice. 

Question IPR23:  What type of discovery is permitted during an inter partes review?

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

Question IPR24:  During an inter partes review, how can a party seek relief?

The AIA provides that a party may request relief during an inter partes review by filing a motion. In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged.  A party seeking relief may contact the Board and request a conference call, explaining why the call is needed.  The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days. 

Question IPR25:  May a party file a motion seeking relief at any time during the inter partes review proceeding?

A motion will not be entered without Board authorization.  Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Question IPR26:  Is an oral hearing permitted during an inter partes review?

Yes, the AIA permits either party to a inter partes review to request an oral hearing.

Question IPR27:  How long will an inter partes review take?

An inter partes review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause. 

Question IPR28:  How will the Board conclude an inter partes review?

The AIA provides that where an inter partes review is instituted and not dismissed, the Board shall issue a final written decision.  The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the inter partes review.

Question IPR29:  May a party request rehearing of the final written decision?

Yes, either party may request rehearing of the Board’s decision.  The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

Estoppel

Question IPR30:  After the Board renders a final decision in an inter partes review, do any estoppels apply against the petitioner?

Yes, a petitioner in an inter partes review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the inter partes review.  Similarly, a petitioner in an inter partes review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the inter partes review. 

Question IPR31:  After the Board renders a final decision in an inter partes review, do any estoppels apply against the patent owner?

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

Appeal

Question IPR32:  Can a party to an inter partes review appeal the Board’s final decision?

Yes, a party dissatisfied with the final written decision in an inter partes review may appeal to the Federal Circuit.

Other

Question IPR33:  How will the Board handle multiple proceedings such as two or more inter partes reviews on the same patent?

Where another matter involving the same patent is before the Office during the pendency of the inter partes review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.  Joinder may be requested by a patent owner or petitioner.

Question IPR34:  Can the parties to an inter partes review settle?

The AIA permits the parties to an inter partes review to settle.  A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision. 

Question IPR35:  Can a party to an inter partes review be sanctioned?

Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of an inter partes review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding. 

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Post Grant Review

Effective Date

Question PGR1:  What is the effective date for the post grant review provision in the AIA?

The effective date for the post grant review provision in the AIA is September 16, 2012. 

Eligibility

Question PGR2:  What patents are eligible for a post grant review?

With limited exceptions, only those patents issuing from applications subject to first-inventor-to-file provisions of the AIA.  The first-inventor-to-file provision of the AIA is not effective until March 16, 2013.

Petition for a Post Grant Review

Question PGR3:  When can a petitioner bring a post grant review for a patent?

A post grant review may be requested on or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent. 

Question PGR4:  Who may file for a post grant review?

A person who is not the patent owner and has not previously filed a civil action challenging the validity of a claim of the patent may petition for a post grant review of the patent.

Question PGR5: On what grounds may a petitioner challenge a patent in a post grant review?

A petitioner for post grant review may request to cancel as unpatentable one or more claims of a patent on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. 282(b) relating to invalidity (i.e., novelty, obviousness, written description, enablement, indefiniteness, but not best mode).

Question PGR6:  How does a party request a post grant review?

To initiate a post grant review, a party must file a petition establishing certain statutory requirements.

Question PGR7:  What statutory and regulatory requirements must a petitioner meet in a petition for a post grant review? 

In a petition for a post grant review, the petitioner must by statute (i) identify all real parties in interest; (ii) identify all claims challenged and all grounds on which the challenge to each claim is based; and (iii) provide copies of evidence relied upon.  The petition must be accompanied by a fee.  In addition, the petitioner must by rule (i) identify the grounds for standing; (ii) provide a claim construction for each challenged claim; (iii) specifically explain the grounds for unpatentability; and (iv) specifically explain the relevance of evidence relied upon.

Question PGR8:  What is the fee for filing a post grant review petition?

The AIA requires the Director to set the fee for a post grant review in such amounts as the Director determines to be reasonable, considering the aggregate costs of the review.  The fee for filing a petition challenging the patentability of up to 20 claims is $35,800.  For each additional claim challenged, there is a fee of $800.00.

Question PGR9: Can a patent owner respond to a petition for a post grant review?

Yes, a patent owner may file a preliminary response to a post grant review petition to provide reasons why no post grant review should be instituted.

Question PGR10:  How long does a patent owner have to file a preliminary response after receiving notice that a petition has been filed challenging the patentability of one or more of its claims?

A patent owner will have three months to submit a preliminary response.

Question PGR11:  Does a patent owner have to file a preliminary response to avoid having a proceeding instituted?

No, a patent owner does not have to file a preliminary response.  If the petition does not meet the standard set for instituting the proceeding, then the petition will be denied even if there is no preliminary response from the patent owner.  The patent owner may, but is not required to, inform the Board if it does not intend to file a preliminary response.

Question PGR12:  May a patent owner challenge the standing of a petitioner in the preliminary response?

Yes, a patent holder may challenge the standing of a petitioner in the preliminary response.  For example, a patent holder may provide evidence that the petitioner has filed a civil action challenging patentability prior to filing the petition or that the petitioner otherwise is estopped from challenging the patent owner’s claims.

Standard to Institute a Post Grant Review

Question PGR13:  What is the standard for instituting a post grant review and who will decide whether the standard is met?

The petitioner must demonstrate that it is more likely than not that at least one of the claims challenged in the petition is unpatentable to trigger a post grant review.  Alternatively, the petitioner may show that the petition raises a novel or unsettled legal question that is important to other patents or patent applications.  The Board of Patent Appeals and Interferences (soon to be renamed the Patent Trial and Appeal Board) will decide petitions for post grant review and conduct any ensuing reviews.  In instituting a review, the Board may take into account whether, and reject the petition or request because, the same or substantially same prior art or arguments previously were presented to the Office.

Question PGR14:  Can a party request rehearing of the Board’s decision on the petition?

Yes, a party may request rehearing of the Board’s decision.  The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed.

Question PGR15:  Can a party appeal the Board’s decision whether to institute a post grant review?

No, a party is statutorily precluded from appealing the Board’s decision whether to institute a post grant review.

Trial

Question PGR16:  If a post grant review is instituted, can the patent owner respond during the review?

Yes, a patent owner may file a response after the institution of a post grant review.

Question PGR17:  If a post grant review is instituted, can the patent owner amend the claims during the review?

A patent owner may file one motion to amend the challenged patent claims, subject to the standards and procedures set by the Office, during a post grant review.  Amendments may cancel any challenged patent claim and/or propose a reasonable number of substitute claims.

Question PGR18:  How much time does a patent owner have to file a response and/or amendment after review is instituted?

The schedule for each proceeding will be set by the Board.  Ordinarily, a patent owner will have three months to file a response and/or amendment.

Question PGR19: If a post grant review is instituted, can the petitioner file additional information?

A petitioner may supplement information provided in the petition for post grant review by a motion within one month of the date trial is instituted. 

Question PGR20:  May a party submit supplemental information after one month from institution?

A party may be authorized to file a motion to submit supplemental information belatedly.  A party will not be permitted to submit supplemental information belatedly except upon a showing that the information could not have been earlier presented and that it is in the interests of justice for the Board to consider the information.

Question PGR21:  How can a party to a post grant review protect confidential information?

The AIA provides that the file of a post grant review is open to the public, except that a party may seek to have a document sealed by filing a motion to seal.  The AIA also provides for protective orders to govern the exchange and submission of confidential information. 

Question PGR22:  Is discovery permitted during a post grant review?

The AIA authorizes the Office to set standards and procedures for the taking of discovery during a post grant review, including that discovery be limited to evidence directly related to factual assertions advanced by either party in the proceeding. 

Question PGR23:  What type of discovery is permitted during a post grant review?

Routine discovery includes cited documents, cross-examination of declaration testimony, and information inconsistent with positions advanced during the proceeding. The parties may agree mutually to provide additional discovery or either party may file an authorized motion seeking additional discovery.

Question PGR24:  During a post grant review, how can a party seek relief?

The AIA provides that a party may request relief during a post grant review by filing a motion.  In addition, the use of conference calls to raise and resolve issues in an expedited manner is encouraged.  A party seeking relief may contact the Board and request a conference call, explaining why the call is needed.  The Office envisions that most of the procedural issues arising during a proceeding will be handled during a conference call or shortly thereafter, i.e., in a matter of days. 

Question PGR25:  Can a party file a motion seeking relief at any time during the post grant review proceeding?

A motion will not be entered without Board authorization.  Authorization may be provided in an order of general applicability, e.g., a scheduling order entered at the start of the trial, or during the preceding after conferring with the Board.

Question PGR26:  Is an oral hearing permitted during a post grant review?

Yes, the AIA permits either party to a post grant review to request an oral hearing.

Question PGR27:  How long will a post grant review take?

A post grant review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause. 

Question PGR28:  How will the Board conclude a post grant review?

The AIA provides that where a post grant review is instituted and not dismissed, the Board shall issue a final written decision.  The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the post grant review.

Question PGR29:  May a party request rehearing of the final written decision?

Yes, either party may request rehearing of the Board’s decision.  The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

Estoppel

Question PGR30:  After the Board renders a final decision in a post grant review, do any estoppels apply against the petitioner?

Yes, a petitioner in a post grant review may not request or maintain a subsequent proceeding before the Office with respect to any challenged patent claim on any ground that was raised or reasonably could have been raised in the post grant review.  Similarly, a petitioner in a post grant review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised or reasonably could have been raised in the post grant review. 

Question PGR31:  After the Board renders a final decision in a post grant review, do any estoppels apply against the patent owner?

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was denied during the proceeding.

Appeal

Question PGR32:  Can a party to post grant review appeal the Board’s final decision?

Yes, a party dissatisfied with the final written decision in a post grant review may appeal to the Federal Circuit.

Other

Question PGR33:  How will the Board handle multiple proceedings for the same patent, such as two or more post grant reviews on the same patent?

Where another matter involving the same patent is before the Office during the pendency of the post grant review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.  Joinder may be requested by a patent owner or petitioner. 

Question PGR34:  Can the parties to a post grant review settle?

The AIA permits the parties to a post grant review to settle.  A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision. 

Question PGR35:  Can a party to a post grant review be sanctioned?

Yes, then AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of a post grant review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding. 

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Prioritized Examination (Track 1)

Prioritized Examination

Question PE1:  What is prioritized examination?

Prioritized examination is a procedure for expedited review of a patent application for an additional fee.  The Office’s goal for prioritized examination is to provide a final disposition within twelve months of prioritized status being granted.

Question PE2:  Who can I contact if I have questions about a decision dismissing my Request for Prioritized Examination or about how to file a Request for Prioritized Examination via EFS-Web?

Contact the person who signed the decision dismissing the request if there is a question about the dismissal.  In addition, each Technology Center (TC) will have a few representatives who can be contacted about a specific decision dismissing a request for prioritized examination.  Questions related to the filing of a request for prioritized examination via EFS-Web can be directed to the Patent Electronic Business Center at 866-217-9197 or ebc@uspto.gov.  General questions about the prioritized examination program can be directed to the Office of Patent Legal Administration at (571) 272-7704 or patent.practice@uspto.gov.

Question PE3:  Is applicant required to use the Office’s certification and request form PTO/SB/424?

It is strongly recommended that applicants use the Office’s certification and request form PTO/SB/424 to request prioritized examination, but the form is not required.  The form is available on EFS-Web and on the Office’s Internet Web site at http://www.uspto.gov/forms/index.jsp.  Failure to use form PTO/SB/424 could result in the Office not recognizing the request or delays in processing the request.  If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.

Question PE4:  How will I know if the limit of 10,000 granted requests for prioritized examination for the fiscal year has been reached?

The Office posts statistics, including the number of granted prioritized examination requests, on its Web site at http://www.uspto.gov/aia_implementation/patents.jsp.  In addition, the Office will post a message in EFS-Web if/when the number of granted requests is close to the limit.  If the limit is reached, the Office will turn off the ability to file a request for prioritized examination in EFS-Web.  

Question PE 5:  The prioritized examination fee set forth in 37 CFR 1.17(c) is $4,800 for a non-small entity and $2,400 for a small entity.  Is there a micro entity fee available for the prioritized examination fee under 37 CFR 1.17(c)?

No. This final rule implements the fee for prioritized examination as set forth in section 11(h) of the Leahy-Smith America Invents Act, and is not an exercise of the Office’s fee-setting authority under section 10 of the Leahy-Smith America Invents Act such that a micro entity fee would apply.

Question PE6:  My application has been granted special status under the prioritized examination (Track I) program.  Will the application remain in that special status until either issuance or abandonment of the application?

The prioritized examination program grants special status until one of the following occurs:

i. Applicant files a petition for extension of time to extend the time period for filing a reply.
ii. Applicant files an amendment to amend the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.
iii. Applicant subsequently files a request for continued examination (RCE).
iv. Applicant files a notice of appeal.
v. Applicant files a request for suspension of action.
vi. A notice of allowance is mailed.
vii. A final Office action is mailed.
viii. The application is abandoned.
ix. Examination is completed as defined in 37 CFR 41.102.

Question PE7:  My application has been granted special status under the prioritized examination program.  When can I expect the final disposition of the application?

The goal of the Office is to provide a final disposition within twelve months, on average, of the date that prioritized status was granted.

Question PE8:  I received a decision dismissing my request for prioritized examination.  Can I file a petition if I think the decision is not proper?

Applicant can file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper.  Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181.

Question PE9:  May I file a petition for extension of time to extend the time period for filing a reply to an Office action?

While such a request will be acted upon as per MPEP 710.02, if applicant files a petition for an extension of time to file a reply or a request for a suspension of action, the prioritized examination of the application will be terminated.

Question PE10:  What types of applications are eligible for Prioritized Examination?

Nonprovisional utility and plant patent applications filed under 35 U.S.C. 111(a), having no more than 4 independent claims, 30 total claims, and no multiple dependent claims, and filed on or after September 26, 2011, are eligible for Prioritized Examination (Track I). See FAQs labeled PE-TI below for details.

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111, or having entered the national stage under 35 U.S.C. 371, in which a request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for Prioritized Examination.  A request for prioritized examination must be made before an Office action responsive to the RCE has been mailed.  See FAQs labeled PE-RCE below for details.

Prioritized Examination Track I (for original application filings)

Question PE-TI1:  What is the effective date of prioritized examination (Track I)?

The effective date of prioritized examination for new applications (Track I) is September 26, 2011.

Question PE-TI2:  What types of applications are eligible for Prioritized Examination (Track I)?  How may I file a Request for Prioritized Examination?  

Nonprovisional utility and plant patent applications filed under 35 U.S.C. 111(a), having no more than 4 independent claims, 30 total claims, and no multiple dependent claims, and filed on or after September 26, 2011, are eligible for Prioritized Examination (Track I).  Requests for Prioritized Examination of utility patent applications must be filed using EFS-Web.  Requests for Prioritized Examination of plant patent applications must be filed in paper.  The request for prioritized examination must be present on filing of the utility or plant application.

Question PE-TI3:  What fees are required upon filing a Request for Prioritized Examination (Track I)?  What happens if one of the required fees is not present upon filing?

Consult the current fee schedule, available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp, for the correct fee amounts.  The fees required to be paid upon filing for Prioritized Examination are:

i.    Basic filing fee, as set forth in 37 CFR 1.16(a), or for a plant application, 37 CFR 1.16(c).
ii.   Search fee, as set forth in 37 CFR 1.16(k), or for a plant application, 37 CFR 1.16(m).
iii.  Examination fee, as set forth in 37 CFR 1.16(o), or for a plant application, 37 CFR 1.16(q).
iv.  Publication fee, as set forth in 37 CFR 1.18(d).
v.  Track I processing fee, as set forth in 37 CFR 1.17(i).
vi.  Track I prioritized examination fee of $4800.00 ($2400.00 for small entities).
vii.  If applicable, any application size fee, due because the specification and drawings exceed 100 sheets of paper, as set forth in 37 CFR 1.16(s).
viii. If applicable, any excess independent claim fee, due because the number of independent claims exceeds three, as set forth in 37 CFR 1.16(h).
ix.  If applicable, any excess claim fee, due because the number of claims exceeds twenty, as set forth in 37 CFR 1.16(i).

If any fee is unpaid at the time of filing of the application, the request for Prioritized Examination will be dismissed.  However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the application and the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.  

Question PE-TI4:  I have an international application pending.  Is there any way that I can file a U.S. application based on that international application and have the U.S. application be eligible for prioritized examination (Track I)?

Yes.  An applicant may file a U.S. application under 35 U.S.C. 111(a), and in that application, claim the benefit of the earlier international application under 35 U.S.C. 365(c), or claim the right of priority of the earlier international application under 35 U.S.C. 365(a), subject to the conditions of 35 U.S.C. 365.  Such an application is eligible for prioritized examination.  However, an applicant may not request prioritized examination (Track I) of a national stage application (submitted under 35 U.S.C. 371) of an international application.

Question PE-TI5:  I have a foreign application pending.  Is there any way that I can file a U.S. application that claims priority to the foreign application under 35 U.S.C. 119(a)-(d) or (f), and have the U.S. application be eligible for prioritized examination (Track I)?

Yes.  Any original utility or plant nonprovisional application filed under 35 U.S.C. 111(a) and claiming priority to a foreign application under 35 U.S.C. 119(a)-(d) or (f) is eligible for prioritized examination.

Question PE-TI6:  I am filing an application, but one of the joint inventors has refused to execute an oath or declaration.  I have prepared a petition under 37 CFR 1.47 to permit the application to be made by the other inventor(s).  Can I request prioritized examination (Track I) for this application?

Yes; however, the petition under 37 CFR 1.47 must be filed with the filing of the application.  Prioritized examination status will not be granted if the petition under 37 CFR 1.47 is dismissed for any reason.  Applicants should consult MPEP 409.03- 409.03(g) for guidance regarding petitions under 37 CFR 1.47 to ensure that a grantable petition under 37 CFR 1.47 is filed with the application.  37 CFR 1.102(e) requires that the application must be complete upon filing as defined by 37 CFR 1.51(b), which requires an oath or declaration having the attributes set forth in 37 CFR 1.63 and 37 CFR 1.68.

Question PE-TI7:  Can I file an application under 35 U.S.C. 111(a) with a nonpublication request and a request for prioritized examination (Track I)?

Yes.  However, the $300 publication fee set forth in 37 CFR 1.18(d) must still be submitted with the request for prioritized examination (along with the other required fees), even though nonpublication is being requested.

Question PE-TI8:  I just filed my utility application and the form for the request for prioritized examination (Track I) through EFS-Web, but I inadvertently omitted an item.  Can I supplement my original EFS-Web filing with a follow-on submission that supplies the missing item?

Yes, but only if the follow-on EFS-Web submission is submitted on the same day that the utility application and the prioritized examination request form are filed.  For example, if the oath or declaration or the filing fees are inadvertently omitted when the application is filed via EFS-Web, then applicant may submit the oath or declaration or the filing fees as a follow-on submission directly into the application on the same day as the filing date of the application.  Applicants are also reminded that only registered users of EFS-Web can submit follow-on documents via EFS-Web and that follow-on documents are documents filed after the initial submission of the application.  Thus, applicant would need to be a registered user of EFS-Web to submit such a follow-on document on the same day the application was filed.  See also MPEP 502.05, III, D. for examples describing implications raised when applicant inadvertently omits an item when filing an application electronically via EFS-Web.

Question PE-TI9:  I received a pre-examination notice from the Office of Patent Application Processing that identifies missing items or informalities in my original application filing.  When will I receive a decision on my request for prioritized examination?  Will my request for prioritized examination (Track I) be dismissed?  Can I file an extension of time to respond to the notice?  

Requests for prioritized examination will be acted upon once the application has met all formal requirements such that it is ready for examination.  A description of what it means for an application to be in condition for examination is provided at MPEP 708.02, subsection VIII.C.  Any pre-examination notice from the Office of Patent Application Processing will delay a decision on the request for prioritized examination until after applicant has filed a complete and timely reply to the pre-examination notice.
A proper request for prioritized examination requires that the application be complete as set forth in 37 CFR 1.51(b).  Thus, the application must include a specification as prescribed by 35 U.S.C. 112 including claim(s), any required drawings, an executed oath or declaration under 37 CFR 1.63, and the required fees.  If the application is not complete on filing as set forth in 37 CFR 1.51(b), then the request will be dismissed.  Applicants may, however, receive a notice regarding informalities in their application (e.g., a notice to file corrected application papers because the application papers are not in compliance with 37 CFR 1.52) that results in the application not being in condition for examination.  These other informalities or deficiencies in the application will delay a decision on the request for prioritized examination, as noted above.  However, the request for prioritized examination may still be granted if the application is complete as set forth in 37 CFR 1.51(b).

Any request for an extension of time, including an extension of time for the purpose of responding to a pre-examination notice (e.g., Notice to File Missing Parts), will cause the application to be ineligible for further treatment under the prioritized examination (Track I) program.  A request for an extension of time prior to the grant of prioritized examination status will prevent such status from being granted.

Question PE-TI10:  May I file a request for prioritized examination (Track I) in a continuing application?  

In order for a request for prioritized examination to be grantable, the application must be an original utility or plant application.  The term “original application” includes both first filings and continuing applications; see MPEP 201.04(a).  Thus, continuation, continuation-in-part, and divisional applications are eligible for prioritized examination, but reissue applications are not.  

Question PE-TI11:  If I file a preliminary amendment in an application that includes a request for prioritized examination (Track I), will that cause a pending request to be dismissed?  Will it cause termination of the special status under prioritized examination if the request has already been granted?  

A preliminary amendment filed in an application that includes a request for prioritized examination will not result in dismissal of a pending request, or termination of special status if a request has already been granted, so long as the preliminary amendment does not cause the application to contain more than four independent claims, more than thirty total claims, or a multiple dependent claim.   

Question PE-TI12:  I understand that the publication fee as set forth in 37 CFR 1.18(d) must be paid when filing a request for prioritized examination.  May I submit a nonpublication request under 35 U.S.C. 122(b)(2)(B)(i)?  If I submit a nonpublication request, must I still pay the publication fee?  May I request a refund of the publication fee if I submit a nonpublication request?  

You may submit a nonpublication request for an application even if prioritized examination is requested.  However, the publication fee still must be paid.  You may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).  

Question PE-TI13: I filed a U.S. application under 35 U.S.C. 111(a) and claimed the benefit of an earlier international application under 35 U.S.C. 365(c) (a by-pass continuation).  Is it necessary that the earlier international application have been filed in English in order to request prioritized examination of the 111(a) application?  

No.  However, a translation is required in accordance with 37 CFR 1.52(b)(1).  

Question PE-TI14:  May I file an application with color drawings by EFS-Web, and is a petition necessary?

Yes, color drawings may be filed with new applications through EFS-Web.  As stated at MPEP 502.05(VIII), “color drawings . . . may be submitted via EFS-Web in only the following types of applications and proceedings: . . .
(3)    Nonprovisional utility patent applications under 35 U.S.C. 111(a), including reissue utility patent applications;
(4)     U.S. national stage applications under 35 U.S.C. 371”

See MPEP 502.05 for filing instructions. See also the EFS-Web legal framework at 74 Fed. Reg. 55200.

Yes, a petition is still required for entry of color drawings; see MPEP 608.02(VIII).

Question PE-TI15:  My request for prioritized examination (Track I) was dismissed.  What fees can be refunded?

Only the Track I prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination.  This fee will be refunded automatically (if paid) without the need for applicant to request such a refund.  The Track I processing fee, set forth in 37 CFR 1.17(i), will be retained to cover the cost of processing the request.  In accordance with 37 CFR 1.26, the application fees, including the basic filing fee, search fee, examination fee, and any required application size or excess claim fees cannot be refunded.  Applicant may, however, request a refund of the search fee and any excess claims fees by filing a petition for express abandonment of the application in accordance with 37 CFR 1.138(d).  Furthermore, applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).  

Prioritized Examination for a Request for Continued Examination (RCE)

Question PE-RCE1:  What is the effective date of prioritized examination for RCE filings?

The effective date of the program for prioritized examination for requests for continued examination is December 19, 2011.

Question PE-RCE2:  For what type of applications, and in which circumstances, may I file Prioritized Examination (RCE)?  

Original nonprovisional utility and plant patent applications filed under 35 U.S.C. 111, or having entered the national stage under 35 U.S.C. 371, in which a request for continued examination (RCE) has been filed, or is concurrently being filed, are eligible for Prioritized Examination.  A request for prioritized examination must be made before an Office action responsive to the RCE has been mailed.  The application must contain, or be amended to contain, no more than 4 independent claims, 30 total claims, and no multiple dependent claims.  Requests for Prioritized Examination of utility patent applications must be filed using EFS-Web.  Requests for Prioritized Examination of plant patent applications must be filed in paper.  

Question PE-RCE3:  When may I file a request for prioritized examination in a case in which a request for continued examination has been or will be filed?

The request for prioritized examination must be filed prior to the mailing of a first Office action after the filing of a request for continued examination, and either be filed concurrently with, or subsequently to, the filing of a request for continued examination.

Question PE-RCE4:   How do I file a Request for Prioritized Examination?  

The request for prioritized examination may be filed using form PTO/SB/424, which is available on EFS-Web and on the Office’s Internet Web site at http://www.uspto.gov/forms/index.jsp.  Failure to use form PTO/SB/424 could result in the Office not recognizing the request or delays in processing the request.  If applicant decides to use an applicant-created form for requesting prioritized examination, applicant’s form should be an equivalent to the Office’s form.

Question PE-RCE5:  What fees are required upon filing a Request for Prioritized Examination in a request for continued examination (RCE)?  What happens if one of the required fees is not present upon filing?

Consult the current fee schedule available at http://www.uspto.gov/about/offices/cfo/finance/fees.jsp for the correct fee amounts.  The fees required to be paid upon filing for Prioritized Examination for requests for continued examination are:

i.  If not previously paid, the publication fee, as set forth in 37 CFR 1.18(d).
ii.  Prioritized examination processing fee, as set forth in 37 CFR 1.17(i).
iii.  Prioritized examination fee of $4800.00 ($2400.00 for small entities).

If any fee is unpaid at the time of filing of the request for prioritized examination, the request for prioritized examination will be dismissed.  However, if an explicit authorization to charge any additional required fees has been provided in the papers accompanying the request, the fees will be charged in accordance with the authorization, and the request will not be dismissed for nonpayment of fees.

Question PE-RCE6:  When filing a request for prioritized examination for continued examination in an application that is national stage entry under 35 U.S.C. 371, how do I identify the proper fees in EFS-Web?  

EFS-Web currently does not provide an entry for the prioritized examination fee in its “Calculate Fees” Tab for applications which are national stage entries.  When filing a request for prioritized examination for continued examination, applicants should use the “Calculate Fees” Tab to select the processing fee (listed under “Miscellaneous Patent Fees” as #1808).  The “Calculate Fees” Tab should also be used to select the publication fee (listed under “Post Allowance and Post Issuance Fees” as #1504) and the RCE fee (listed under “Miscellaneous Patent Fees” as #1801) if these have not been previously paid.  The fee for prioritized examination should be paid using form PTO/SB/17 and entering “Prioritized Examination Fee” and the proper fee amount in the “Other” line under section 4, “Other Fee(s)”.  Form PTO/SB/17 should then be included in the EFS-Web filing through the “Attach Documents” tab.

Thus, applicants will attach forms PTO/SB/424 and PTO/SB/17, as well as any forms or documents incident to the request for continued examination (if not previously filed), using the “Attach Documents” tab.  Applicants will use the “Calculate Fees” tab to identify fees such as the processing fee, RCE fee (if not previously paid), and publication fee (if not previously paid).  Note that this procedure only applies to applications that are national stage entries, for which prioritized examination for a request for continued examination is being sought.

Question PE-RCE7:  Is prioritized examination now available for applications that were filed as a national stage entry under 35 U.S.C. 371?  

Upon filing a request for continued examination, prioritized examination becomes available for an application filed as a national stage entry under 35 U.S.C. 371.  Track I prioritized examination is still available only to a U.S. application under 35 U.S.C. 111(a) meeting the requirements of the program.

Question PE-RCE8:  Is there a separate limit of 10,000 granted requests for prioritized examination for the fiscal year for RCE filings?

No, the 10,000 limit applies to the sum of all granted requests for prioritized examination, including both Track I and prioritized examination for RCE requests.  

Question PE-RCE9:  My application has previously been granted special status under the prioritized examination (Track I) program.  I am now filing an RCE for that application.  May I file a request for prioritized examination with that RCE filing?  

Yes.  The prioritized examination program permits a single request to be granted upon filing a new application under 35 U.S.C. 111(a), and a single request to be granted upon filing a request for continued examination under 37 CFR 1.114.

Question PE-RCE10:  My application has previously been granted special status under the prioritized examination (RCE) program.  I am now filing a second RCE for that application.  May I file a request for prioritized examination with that second RCE filing?  

No.  The prioritized examination program permits only a single request to be granted associated with a request for continued examination under 37 C.F.R. 1.114 in that application.

Question PE-RCE11:  I received a decision dismissing my request for prioritized examination for a request for continued examination.  May I file a petition if I think the decision is not proper?  May I file a second request for prioritized examination?

Applicant may file a petition under 37 CFR 1.181 if applicant believes that a decision dismissing the request for prioritized examination is not proper.  Applicant should review the reason(s) stated in the decision dismissing the request and make a determination that an error was made by the Office in not granting the request before filing such a petition under 37 CFR 1.181. Alternately, applicant may file a new request for prioritized examination for that same request for continued examination.  The new request must include the proper fees and be timely; i.e., be filed prior to the mailing of a first Office action after the filing of the request for continued examination.  

Question PE-RCE12:  My request for prioritized examination (RCE) was dismissed.  What fees can be refunded?

Only the Track I prioritized examination fee, set forth in 37 CFR 1.17(c), will be refunded upon the dismissal of the original request for prioritized examination.  This fee will be refunded automatically (if paid) without the need for applicant to request such a refund.  The Track I processing fee, set forth in 37 CFR 1.17(i), will be retained to cover the cost of processing the request.  Applicant may request a refund of the publication fee in accordance with MPEP 1126 if the application is not published under 35 U.S.C. 122(b).

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Inventor's Oath or Declaration

Effective Date

Question IOD1: What is the effective date for the inventor’s oath/declaration provision in the AIA?

The effective date for the inventor’s oath/declaration provision in the AIA is September 16, 2012. 

Inventor's Oath or Declaration

Question IOD2:  Under the inventor’s oath/declaration provision, what information must an inventor supply in his/her oath/declaration to be filed in the Office for a patent application?

An inventor must state in his/her oath/declaration that (i) he/she is an original inventor of the claimed invention; and (ii) he/she authorized the filing of the patent application for the claimed invention.  An inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship.

Substitute Statement

Question IOD3:  Does the inventor’s oath/declaration provision permit a substitute statement in lieu of an inventor’s oath/declaration?

Yes, the inventor’s oath declaration provision permits a substitute statement to be filed in an application when the inventor is: (i) deceased; (ii) legally incapacitated; (iii) unable to be found or reached after diligent effort; or (iv) refuses to sign an oath/declaration.

Question IOD4:  Who may file a substitute statement in lieu of an inventor’s oath/declaration if such a statement is permitted in a patent application?

Any of the following entities may file a substitute statement on behalf of an inventor when such a statement is permitted in a patent application: (i) the inventor’s legal representative; (ii) the assignee; (iii) a party to whom the inventor is under an obligation to assign; or (iv) a party who otherwise shows sufficient proprietary interest in the claimed invention.

Assignment with Statements

Question IOD5:  Can an assignment document contain the statements required to be included in an inventor’s oath/declaration?

Yes, an assignment may include the statements required in an oath/declaration.  In such case, the applicant may file a combined inventor’s oath/declaration and assignment document in the Office.

Timing

Question IOD6:  Does the inventor’s oath/declaration provision contain any timing restriction for filing an inventor’ oath/declaration?

Yes, the inventor’s oath/declaration provision permits the Office to issue a Notice of Allowance in an application only if: (i) the inventor’s oath/declaration is filed; (ii) a substitute statement filed in lieu of the inventor’s oath/declaration; or (iii) an assignment containing the statements required for an inventor’s oath/declaration is recorded in the Office for the patent application.

Question IOD7:  When is an applicant required to submit an inventor’s oath/declaration?

An applicant (i) may submit the inventor’s oath/declaration on filing of the application; or (ii) may postpone until the Office issues a Notice of Allowability, provided that the applicant files a signed Application Data Sheet identifying the inventive entity.

Assignee Filing

Question IOD8:  Can a company, as the assignee, file a patent application for an invention on behalf of the company rather than on behalf of the inventor?

Yes, the assignee can be the applicant.  However, the inventor must still execute an oath/declaration.  The assignee may only execute a substitute statement in lieu of an oath/declaration where the inventor refuses to execute an oath/ declaration, cannot be found or reached after diligent effort, is deceased, or is legally incapacitated. 

Question IOD9:  Prior to September 16, 2012, an assignee was required to proceed via 37 C.F.R. §§ 3.71 and 3.73 to establish ownership of the application to be able to grant a power of attorney to prosecute the application.  Is this still the case for a new application filed on or after September 16, 2012, where the assignee files the application as the applicant?

No, where the assignee is the applicant, the assignee may appoint a power of attorney to prosecute the application without having to comply with §§ 3.71 and 3.73.

Question IOD10:  If an applicant postpones submission of the inventor’s oath/ declaration until a Notice of Allowability issues, how will the Office know the inventorship to examine the application?

Where an applicant elects to postpone submission of the inventor’s oath/ declaration, the applicant must submit a signed Application Data Sheet (ADS) identifying the inventive entity.  The ADS must identify each inventor by his or her legal name and provide a mailing address and residence for each inventor. 

Question IOD11:  What type of notices will an applicant receive if he/she/it does not submit the inventor’s oath/declaration on filing of an original (non-reissue) application?

The Office will not send a Notice to File Missing Parts requiring an inventor’s oath/declaration if a signed Application Data Sheet (ADS) has been filed naming each inventor by his or her legal name and identifying a mailing address and residence for each inventor.  Where the inventor’s oath/declaration has not been submitted at the time that the application is otherwise in condition for allowance, the Office will send a Notice of Allowability (but not a Notice of Allowance and Fee(s) Due) requiring the inventor’s oath/declaration. 

Question IOD12:  If an applicant postpones the submission of an inventor’s oath/declaration until the application is otherwise in condition for allowance, when must the applicant submit an Application Data Sheet (ADS)?

The ADS should be submitted on filing of the application so that the inventive entity can be known.  If there is no inventor’s oath/declaration or signed ADS naming the inventive entity, the Office will send a Notice to File Missing Parts requiring the submission of either the inventor’s oath/declaration or a signed ADS. 

Question IOD13:  If an applicant files a continuation-in-part (CIP) application after September 16, 2012, naming inventors X and Y, and the parent application named only inventor X, can the applicant use in the CIP application a copy of the declaration signed by inventor X that was filed in the parent application?

Yes, an applicant can the declaration filed in the parent application if that declaration complies with new 35 U.S.C. 115 and a signed Application Data Sheet (ADS) is filed in the CIP application (either before or with the copy of the parent declaration) naming the inventive entity (X and Y).  An oath or declaration signed by the additional inventor Y in the CIP application would also be required.  But as long as a signed ADS was filed naming the inventive entity (X and Y) in the CIP application, the oath or declaration executed by the additional inventor Y in the CIP application would not need to identify inventor X.

Reissue

Question IOD14:  Since the AIA has eliminated the requirement for statements of lack of deceptive intent, what will be the impact on reissue practice?

The inventor’s oath/ declaration filed in the reissue proceeding need not contain a statement that the error(s) being corrected occurred without deceptive intention, and a supplemental oath or declaration is no longer required due to the filing of an amendment. 

Forms

Question IOD15:  What forms has the Office made available related to the inventor’s oath/declaration provision?

The Office has made a variety of new forms related to the inventor’s oath/declaration provision available on the Office’s AIA microsite as well as on the Office’s form site, including an inventor declaration for an original (non-reissue) application, inventor declaration for a reissue application, substitute statement, and Application Data Sheet (ADS). 

Question IOD16:  Can I continue to use the same inventor declaration form after the effective date of the inventor’s oath/declaration provision on September 16, 2012?

No.  There is new statutorily-mandated language that must be included in the inventor oath/declaration after September 16, 2012, that is not included on the inventor oath/declaration form available before that date.  The new statutorily mandated language includes: (1) a statement that “the application was made or authorized to be made by the affiant or declarant,” and (2) the acknowledgement of penalties clause must refer to “imprisonment of not more than 5 years.”  The Office has made a new oath/declaration form containing the necessary statutorily-mandated language available on the Office’s AIA microsite as well as on the Office’s form site.

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Tax Strategies

Question  TAX1:  How does Section 14 of the AIA affect the patentability of tax strategies? 

Applicants will no longer be able to rely solely on the novelty or non-obviousness of a tax strategy embodied in their claims in order to distinguish the claims from the prior art.

Question TAX2:   What is the effective date of the tax strategy provisions in the AIA?

The effective date of the tax strategy provisions is September 16, 2011.

Question  TAX3:   Which patent applications will be subject to section 14 of the AIA?

Section 14 of the AIA applies to any patent application that is pending on, or filed on or after, September 16, 2011.

Question  TAX4:  If I have a patent issued before September 16, 2011, that undergoes reexamination, will Section 14 of the AIA apply during the reexamination?

No.  Section 14 of the AIA applies to patents issued on or after September 16, 2011.

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Transitional Program for Covered Business Method Patents

Effective Date

Question CBMR1: What is the effective date for the covered business method review provision in the AIA?

The effective date for the covered business method review provision in the AIA is September 16, 2012. 

Availability

Question CBMR2:  How long will covered business method reviews be available?

The AIA provides that the covered business review provision sunsets after 8 years from the effective date of the provision.  Accordingly, the Office will not accept new petitions for covered business method review filed on or after September 16, 2020. 

Eligibility

Question CBMR3: What patents are eligible for a covered business method review?

A covered business method review is available for all patents issuing from applications subject to first-inventor-to-file provisions of the AIA as well as those patents issuing from applications subject to the first-to-inventor provisions in current Title 35, provided that the patent is drawn to a covered business method.  The AIA specifies that a covered business method patent is a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.  The AIA does not specify what a patent for a technological invention covers, and therefore, the Office has promulgated a rule for technological invention.

Question CBMR4: What is a patent for a technological invention?

In determining whether a patent is for a technological invention, the following will be considered on a case-by-case basis:  whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution. 

Question CBMR5:  How will the Office interpret the term “financial product or service” provided in the covered business method definition?

In administering the program, the Office will consider the legislative intent and history behind the public law definition and the transitional program itself.  For example, the legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”  157 Cong. Rec. S5432 (daily ed. Sept. 8, 2011) (statement of Senator Schumer).  This remark tends to support the notion that “financial product or service” should be interpreted broadly. 

Question CBMR6: Is it the subject matter of the patent or the claims themselves that will be evaluated in determining whether a patent is a covered business method patent?

The definition for a covered business method patent provided in the AIA provides that a covered business method patent is “a patent that claims a method or corresponding apparatus for performing data processing . . . , except that the term does not include patents for technological inventions.”  (Emphasis added.)  The determination of whether a patent is a covered business method patent subject for review therefore will be based on what the patent claims.

Question CBMR7:   Who bears the burden to demonstrate that at least one claim of the challenged patent is to a covered business method patent and not directed to a technological invention?

The petitioner bears the burden to demonstrate that the challenged patent is a covered business method patent and that at least one claim of the challenged patent is not directed to a technological invention to show that the petitioner has standing to proceed.  The showing for both covered business method patent and technological invention is based on what is claimed. 

Petition for a Covered Business Method Review

Question CBMR8: Who may file for a covered business method review?

Only a person who is sued or charged with infringement of a covered business method patent may petition for a covered business method review of the patent.

Question CBM9:  What does charged with infringement mean in the context of a covered business method review?

Charged with infringement means a real and substantial controversy regarding infringement of a covered business method patent exists such that the petitioner would have standing to bring a declaratory judgment action in Federal court. 

Question CBMR10:  When can a petitioner bring a covered business method review for a patent?

A covered business method review may be requested except during the period in which a petition for post-grant review could be filed, e.g., 9 months after the issuance of a patent that is subject to the first inventor-to-file provisions.  The transitional review program is available for non-first-to-file patents, even within the first none months of the grant of such patents. 

Question CBMR11:  On what grounds may a petitioner challenge a patent in a covered business method review?

A petitioner for covered business method review may request to cancel as unpatentable one or more claims of a covered business method patent granted under the first-to-file provisions of the AIA on any ground, but limited prior art shall apply for those challenged covered business method patents granted under the first-to-invent provisions of Title 35.  

Trial

Question CBMR12:  How will covered business method reviews be conducted?

Generally, the AIA provides that covered business method reviews will employ the standards and procedures of a post grant review, subject to certain exceptions such as the grounds for challenge and the scope of estoppel.

Question CBMR13: How long will a covered business method review take?

A covered business method review is statutorily required to be complete within one year of institution, except that the time may be extended up to six months for good cause. 

Question CBM14:  How will the Board conclude a covered business method review?

Like in a post grant review, where a covered business review is instituted and not dismissed, the Board shall issue a final written decision.  The decision shall address the patentability of any challenged patent claim and any new claim added via amendment during the covered business review.

Question CBM15:  May a party request rehearing of the final written decision?

Yes, either party may request rehearing of the Board’s decision.  The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed in the petition.

Estoppel

Question CBMR16:  After the Board renders a final decision in a covered business method review, do any estoppels apply against the petitioner?

Yes, a petitioner in a covered business method review may not request or maintain a subsequent proceeding before the Office with respect to any claim on any ground raised or reasonably could have been raised in the covered business method review.  By contrast, a petitioner in a covered business method review may not assert in a subsequent district court or ITC action that a claim is invalid on any ground that the petitioner raised. 

Question CBMR17:  After the Board renders a final decision in a covered business method review, do any estoppels apply against the patent owner?

Yes, a patent owner is estopped from taking action inconsistent with any adverse judgment including obtaining in a patent a claim that is patentably indistinct from a finally refused or cancelled claim or amending its specification or drawing in a way that it was not permitted to do during the proceeding.

Appeal

Question CBMR18:  Can a party to covered business method review appeal the Board’s final decision?

Yes, a party dissatisfied with the final written decision in a covered business method review may appeal to the Federal Circuit.

Other

Question CBMR19:  How will the Board handle multiple proceedings for the same patent, such as two or more covered business method reviews on the same patent?

Where another matter involving the same patent is before the Office during the pendency of the covered business method review, the Board may enter any appropriate order regarding the additional matter including providing for the stay, transfer, consolidation, or termination of any such matter.  Joinder may be requested by a patent owner or petitioner.

Question CBMR20:  Can the parties to a covered business method review settle?

Like in a post grant review, parties to a covered method patent review are permitted to settle.  A settlement terminates the proceeding with respect to the petitioner, and the Board may terminate the proceeding or issue a final written decision. 

Question CBMR21:  Can a party to a covered business review be sanctioned?

Yes, the AIA requires the Office to prescribe sanctions for abuse of discovery, abuse of process, or any other improper use of the review, such as to harass or cause unnecessary delay or an unnecessary increase in the cost of the proceeding.

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Preissuance Submissions

General

Question PS1:  What is the effective date for the preissuance submission provision in the AIA?

The effective date for the preissuance submission provision in the AIA is September 16, 2012. 

Question PS2:  Who may file a preissuance submission?

A third party may file a preissuance submission in any non-provisional utility, design, or plant application, as well as in any continuing application, even if the application to which the submission is directed has been abandoned or has not been published.  Third-party preissuance submissions may not be filed in any reissue application or reexamination proceeding.

Question PS3:  What can a third party file in a preissuance submission?

A third party may file any patents, published patent applications, or other printed publications of potential relevance to the examination of a patent application.

Filing a Preissuance Submission

Question PS4:  When can a third party make a preissuance submission in a patent application?

A third-party preissuance submission statutorily must be made in a patent application before the earlier of:  (a) the date a notice of allowance under 35 U.S.C. 151 is given or mailed in the application; or (b) the later of (i) six months after the date on which the application is first published under 35 U.S.C. 122 by the Office, or (ii) the date of the first rejection under 35 U.S.C. 132 of any claim by the examiner during the examination of the application.

Question PS5:  How can a third party file a preissuance submission?

Third parties are encouraged to file third-party submissions electronically through the Office’s dedicated web-based interface for third-party submissions, which can be accessed via EFS-Web.  Submissions may also be submitted in paper through first-class mail, United States Postal Service (USPS) Express Mail service pursuant to 37 CFR 1.10, or by hand delivery.  However, processing delays will be associated with paper submissions due to the scanning and indexing of these papers by the Office.  Third-party submissions may not be filed by facsimile.

Question PS6:  In what types of applications may a third party file a preissuance submission?

A third party may file a submission in any non-provisional utility, design, or plant application, as well as in any continuing application, even if the application to which the submission is directed has been abandoned or has not been published.  Third-party submissions may not be filed in any issued patent, reissue application, or reexamination proceeding.

Content of a Preissuance Submission

Question PS7:  What items must be included in a preissuance submission?

            There are several items that must be included for a compliant preissuance submission:

1. Form PTO/SB/429 (or equivalent document list), identifying the publications, or portions of publications, being submitted;
2. A concise description of the asserted relevance of each item identified in the document list;
3. A legible copy of each item identified in the document list, other than U.S. patents and U.S. patent application publications;
4. An English language translation of any non-English language item identified in the document list;
5. Statements by the party making the submission that:
   1. The party is not an individual who has a duty to disclose information with respect to the application under § 1.56; and
   2. The submission complies with the requirements of 35 U.S.C. 122(e) and § 1.290; and
6. Any required fee, or the statement that the fee exemption applies to the submission.

Question PS8:  Is it an absolute requirement to include form PTO/SB/429 with a preissuance submission?

No, but it is highly recommended for paper submissions.  Use of form PTO/SB/429 will help to ensure that important requirements are not overlooked, such as the document listing requirements and the required statements pursuant to § 1.290(d)(5).  The form PTO/SB/429 will also enable the third party to indicate whether a fee is due or to select the “first and only” statement where the fee exemption applies. 

Use of this form will not be necessary for preissuance submissions filed electronically via the Office’s dedicated Web-based interface for preissuance submissions, as this interface will prompt the third party to complete the fields that are provided on the form and will automatically format the entered information into an electronic version of the form PTO/SB/429 for electronic submission.

Question PS9:  How should a third party request that the Office provide notification if a preissuance submission is non-compliant?

If filing electronically via the dedicated Web-based interface in EFS-Web, the request must be made on the “Applicant Data” screen under the heading “REQUEST FOR NOTIFICATION OF NON-COMPLIANT THIRD PARTY PREISSUANCE SUBMISSION.”  Check the box requesting the notification and enter an email address in the box provided.  The email address will not be made of record in the application should the submission be deemed compliant.

If filing in paper, the request must be made on a separate sheet of paper.  The paper should be clearly titled “REQUEST FOR NONTIFICAITON OF NON-COMPLIANT THIRD PARTY PREISSUANCE SUBMISSION” and identify the email address to which the notification should be directed.  This separate paper must be clearly labeled so the paper is not made of record in the application.

Question PS10:  If the publication date of a printed publication is not known, can a third party still include that document in the preissuance submission?

Yes, the third party may include a document for which the publication date is unknown in a preissuance submission.  However, the third party must supply evidence of publication.  At a minimum, the third party must provide a date of retrieval or a time frame when the document was available as a publication as well as include evidence that establishes the document as a publication.  Such evidence may be in the form of affidavits, declarations, or any other appropriate format.

Question PS11:  Can a third party use the requirement for a concise description of relevance to propose rejections of the claims to the examiner?

No, a third party should not through the concise description requirement propose rejections of the claims or set forth arguments relating to an Office action or applicant’s reply to an Office action.  Instead, the third party should use the concise description requirement to set forth facts explaining how an item listed is of potential relevance to the examination of the application in which the submission has been filed.  This is done, most effectively, by pointing out relevant pages or lines of the respective document and providing a focused description to draw the examiner’s attention to the relevant issues.

Timing of a Preissuance Submission

Question PS12:  How can a third party determine if a planned preissuance submission will be timely given the limited statutory time window for such submissions to be made?

First, check Public PAIR to determine if a Notice of Allowance (NOA) has been issued in the application.  If the NOA has been issued, you may not file a third-party submission.  If the NOA has not been issued, determine if a first rejection has been issued by the examiner or if the application has been published for six months or longer.  You may file as long as the first rejection has not been issued or the application has not been published for six months. 

Question PS13:  What happens if a third party files a preissuance submission on the same date the first rejection is mailed and the application has been published for more than six months?

If a third party files a preissuance submission on the same date the first rejection is mailed and the application has been published for more than six months, the submission would not be timely and would not be entered.  All third-party submissions must be filed prior to, not on, the critical date.  Where the application has been published for more than six months and no notice of allowance has been mailed, the critical date is the mailing date of the first rejection such that the third-party submission would need to be filed prior to the mailing date of the first rejection.

Fees

Question PS14:  Is there a fee to file a preissuance submission?

Yes, a third party must submit a fee of $180 for every ten documents listed or fraction thereof, unless the fee exemption applies to the submission.  A third party is exempt from paying a fee for a submission of three or fewer documents, provided it is the party’s first such submission and the party files a “first and only” statement.

Question PS15:  If another third party has already taken advantage of the fee exemption in the application, may a second third party also benefit from the fee exemption in the same application?

Yes, a second third party may take advantage of the fee exemption in the same application as long as the submission includes three or fewer items and is accompanied by the “first and only” statement.  However, such statement could not be made where the third parties are in privity with each other.

Question PS16:  If an applicant took advantage of the fee exemption when he/she/it filed the first preissuance submission in an application, can the third party file a subsequent preissuance submission in the same application?

Yes, a third party may file a subsequent preissuance submission if the need for the subsequent submission was not known at the time of the earlier submission.  Any such subsequent submission would not be exempt fee requirement.

Question PS17:  Can an applicant electronically file a preissuance submission and pay the required fee at a later time?

No, the fee must accompany a preissuance submission at the time of filing.  Registered e-Filers who authenticate can save “in-progress” submissions and return to edit them prior to completing filing.  Payment, in this instance, will be due when the filing is complete.  Unregistered users, by contrast, must complete the filing and pay the fee at the time the submission is initiated.

Question PS18:  If an applicant wishes to file a third-party submission of twelve documents, what is the required fee?

The required fee is $180 for every ten items or fraction thereof identified in the document list.  Therefore, the applicant would have to pay a fee of $360 for twelve listed documents.  If filing electronically, the applicant will need to split the twelve documents into two separate submissions, paying $180 for each submission.  

Processing of Preissuance Submissions

Question PS19:  What happens if a preissuance submission is found non-compliant?

Third-party submissions that are not compliant with the statute will not be entered into the image file wrapper (IFW) record of an application or considered by the examiner.  Instead, non-compliant preissuance submissions will be discarded.  The Office will not refund the required fees or toll the statutory time period for making a third-party submission.  Additionally, the Office will not accept amendments to a non-compliant submission, but the party may file another complete submission, provided the statutory time period for filing a submission has not closed.

Question PS20:  Will a third party be notified if his/her/its preissuance submission is found non-compliant?

Yes, if a third party provides an electronic mail message (email) address with a preissuance submission, whether filed electronically or in paper, the Office will notify the third party of such non-compliance at the email address provided and will include the reason(s) for non-compliance.  No notification will be issued where a third party does not provide an email address with the submission.

Question PS21:  Does the applicant have any duty to respond to a preissuance submission?

No, absent a request by the Office, an applicant has no duty to, and need not, reply to a preissuance submission.

Question PS22:  Will the applicant be notified when a preissuance submission is entered into his/her/its application?

Yes, the Office will notify the applicant upon entry of a compliant preissuance submission in an application file if the applicant participates in the Office’s e-Office Action program.  The contents of a compliant third-party submission will be made available to the applicant via its entry in the IFW of the application.

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Citation of Patent Owner Statements in a Patent File

Question CPOS1: What is the effective date for the citation of patent owner statements provision in the AIA?

The effective date for the citation of patent owner statements provision in the AIA is September 16, 2012. 

Question CPOS2:  Who is permitted to submit patent owner statements?

Either a third party or the patent owner may cite patent owner statements in a patent file.

Question CPOS3:  If a third party cites a patent owner statement, can a third party keep his/her identity confidential?

Yes, a third party can request in writing to maintain his/her identity in confidence, and it will be excluded from the patent file.

Question CPOS4:  What types of written statements by a patent owner may be submitted into the official file of a patent?

A statement of the patent owner filed by the patent owner in a proceeding before a Federal court or the Office in which the patent owner took a position on the scope of any claim of the patent may be filed.  

Question CPOS5:  Is a written statement of the patent owner regarding claim scope filed in a proceeding before the International Trade Commission (ITC) eligible for submission?

No, the ITC is a Federal agency, not a Federal court.  The citation of patent owner statements provision expressly provides for the submission of a statement filed in a proceeding before a Federal court or the Office only.

Question CPOS6: Is a deposition transcript of the patent owner filed by an accused infringer in a Federal court proceeding eligible for submission into the official file of a patent?

No, the deposition transcript does not qualify as a written statement by the patent owner because the transcript was not filed by the patent owner in the Federal court proceeding.  Instead, it was filed by the accused infringer.  Thus, the content of the transcript are not taken to be a position by the patent owner in the Federal court proceeding. 

Question CPOS7:  Is a written statement by the patent owner regarding the scope of a claim of a particular patent eligible for submission into the official files of related patents?

No, the written statement of the patent owner must be directed to the claims of the particular patent to which the statement is directed for the statement to be eligible for entry into the official file of that patent. 

Question CPOS8:  What are the filing requirements for submitting a patent owner claim scope statement into the official file of a patent?

There are several items that must be included for a patent owner claim scope statement to be entered into the official file of a patent:

1. 1. An explanation of the pertinence and manner of applying the written statement to at least one claim of the patent;
   2. Any other documents, pleadings, and evidence from the proceeding in which the statement was filed that address the written statement;  
   3. Identification of the forum and proceeding in which patent owner filed the statement;
   4. Identification of the specific papers and portions of the papers submitted that contain the statement;
   5. Explanation of how each statement submitted constitutes a position taken by patent owner on the scope of any claim of the patent; and
   6. Proof of service upon the patent owner if the statement is submitted by a third party. 

Question CPOS9:  Can a patent owner include an explanation of how the claims remain patentable when submitting a patent owner claim scope statement?

Yes, a patent owner submitter may state how any claim is patentable over any submitted patent owner claim scope statement. 

Question CPOS10:  When can third party or patent owner file a citation of patent owner statements?

A third party or the patent owner may cite patent owner statements at any time.

Question CPOS11:  Will the Office consider a patent owner claim scope statement when deciding whether to order reexamination?

No, the Office will only consider such a statement after reexamination has been ordered and only to inform the Office’s determination of the proper scope and meaning of the claims. 

Question CPOS12: Will the Office consider a patent owner claim scope statement when deciding whether to institute an administrative trial such as a post grant review, inter partes review, or covered business method review?

No, the Office may not consider such a patent owner claim scope statement when deciding whether to order or institute an administrative trial proceeding.

Question CPOS13:  Will the examiner in a reexamination adopt the claim interpretation provided in the patent owner claim scope statement?

No, the examiner in a reexamination will not necessarily adopt the interpretation of the claims based solely upon a written statement of the patent owner.  Claim construction standards for reexamination are unaffected.  A written statement of the patent owner will be weighed with all other relevant information in making an independent determination of the proper claim scope and meaning of the claims by the Office once a reexamination proceeding is ordered.

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Supplemental Examination

General

Question SE1:  What is the effective date for the supplemental examination provision in the AIA?

The effective date for the supplemental examination provision in the AIA is September 16, 2012. 

Question SE2:  What is the purpose for a supplemental examination?

The patent owner may request a supplemental examination for a patent so that the Office can consider, reconsider, or correct information believed to be relevant to the patent.

Question SE3:  What type of information can a patent owner present to the Office in a supplemental examination?

The patent owner may present any information believed to be relevant to the patent.  The information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.

Filing a Request for Supplemental Examination

Question SE4:  Who may file a supplemental examination?

The patent owner may file a supplemental examination; a third party is not permitted to seek a supplemental examination.

Question SE5:  Which patents are eligible for supplemental examination?

A patent owner may request supplemental examination of any patent during the period of enforceability of the patent. 

Question SE6:  May a request for supplemental examination be filed by fewer than all of the joint owners of the patent, if the patent for which supplemental examination is requested is jointly owned by more than one party?

No, all parties having an ownership interest in the patent must act together as a composite entity in proceedings before the Office.  This policy is consistent with ex parte reexamination practice.  Under rare circumstances, such as in the case of a deceased or legally incapacitated joint owner, the Office may permit less than all of the joint owners to file a request if a grantable petition under 37 C.F.R. § 1.183 requesting waiver of the provisions of 37 C.F.R. §§ 3.71 and 3.73(c) is filed.  If the owner of all or a portion of the entire right, title, and interest in the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction.

Question SE7:  May a supplemental examination request be filed by a licensee or other party that is not the owner of the patent?

No, only a patent owner may file a request for supplemental examination.  The Office is not authorized to permit a party who is not a patent owner, or a party who merely states that it is, for example, an exclusive licensee or a person with sufficient proprietary interest under 35 U.S.C. 118, to file a request for supplemental examination.

Question SE8:  Is the request for supplemental examination subject to a page limit?

No, there are no page limits applicable to a request for supplemental examination.  However, if any document, other than the request, is over 50 pages in length, then the patent owner must provide a summary of the relevant portions of the document with citations to the particular pages containing the relevant portions.  In addition, any non-patent document over 20 pages in length that is submitted as part of the request is subject to the document size fees.

Items of Information

Question SE9:  What is an “item of information”? 

An item of information includes a document containing information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct.  An item of information is not limited to patents and printed publications, and may include, for example, a sales receipt or invoice.  If the information is not, at least in part, contained within or based on any document filed as part of the request, the discussion within the body of the request relative to the information will be considered to be an “item of information.”  For example, if a discussion of a potential application of 35 U.S.C. 101 to patent claim 1 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, then the discussion in the request will be considered to be an item of information.

Question SE10:  How many items of information may a patent owner submit in a request for supplemental examination?

A request for supplemental examination may include up to twelve items of information.

Question SE11:  If the discussion within the body of the request is based, at least in part, on a supporting document, will the discussion in the body of the request be counted as an item of information?

No, if the discussion within the body of the request is based, at least in part, on a supporting document, then the supporting document, and not the discussion within the request, will be considered as the item of information.  For example, if the patent owner discusses a potential public use or sale of the claimed invention, and also submits a supporting document with the request as possible evidence of a public use or sale, or the lack thereof, then the supporting document, and not the discussion within the body of the request, will be considered as an item of information.

Question SE12:  May an item of information, such as an image of a supporting document, be embedded within the body of the request in lieu of being submitted as a separate copy of the supporting document? 

No, if the patent owner presents an image of a supporting document, such as an image of an electronic mail message or other document, within the body of the request, then a separate copy of the supporting document must be provided.  The separate copy of the item of information will be considered as the item of information.  The counting of an item of information may not be avoided by inserting the content of the supporting document within the body of the request. 

Question SE13:  Is an item of information required to be in writing?

Yes, an item of information must be in writing.  The Office currently does not have the capability of retaining records in unwritten form.  For this reason, any audio or video recording must be submitted in the form of a written transcript in order to be considered.  A transcript of a video may be submitted together with copies of selected images of the video and a discussion of the correlation between the transcript and the copies of the video images.

Question SE14:  If one item of information is combined in the request with one or more additional items of information, how will the combination of items of information be counted?

Each item of information of the combination will be separately counted.  For example, if a patent owner requests the Office to consider the patentability of the claims in view of a combination of reference A and reference B, reference A and reference B will be separately counted, resulting in two items of information.

Question SE15:  If one or more items of information are presented by the patent owner as cumulative, how will these items of information be counted?

Cumulative items of information will be separately counted.  When considering the submission of multiple documents that are believed to be cumulative, the Office recommends the patent owner select one or two of the documents as the items of information that will be submitted with the request.

Question SE16:  If one item of information is discussed in the request with respect to multiple issues of patentability, will that single item of information be counted more than one time for each patentability issue?

No, the Office will count the number of items of information, not the number of issues discussed in the request with respect to that item.  For example, a document which is discussed in the request as raising an issue under 35 U.S.C. 101 and also under 35 U.S.C. 112 will be counted as one item of information.

Question SE17:  Will a declaration or affidavit be counted as an item of information?

Yes, a declaration or affidavit may be counted as an item of information.

Question SE18:  If a declaration or affidavit presents multiple items of information, will the declaration or affidavit be counted as one item of information?

No, if a declaration or affidavit presents one or more separate and distinct items of information, then each item of information presented may be counted separately.  For example, if a declaration presents information relating to an issue under 35 U.S.C. 101 affecting patent claim 1, and also presents information relating to an  issue under 35 U.S.C. 103 affecting patent claim 10, then each item of information within the declaration will be counted separately, resulting in two items of information.

Fees

Question SE19:  What fees are required to be filed with a request for supplemental examination?

A request for supplemental examination must be accompanied by a total fee of $21,260, broken down as (i) a fee of $5,140 for processing and treating a request for supplemental examination; and (ii) a fee of $16,120 for ex parte reexamination ordered as a result of a supplemental examination proceeding.  In addition, a request for supplemental examination must be accompanied by any applicable document size fees.

Question SE20: Will the patent owner receive a refund of a portion of the fees if reexamination is not ordered because no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request?

Yes, the fee of $16,120 for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded if the supplemental examination certificate indicates that no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request and reexamination is not ordered.

Question SE21:  Which documents are subject to the document size fees? 

The document size fees apply only to non-patent documents that have a length of more than 20 pages. Non-patent documents having a length of 20 pages or less are not subject to the document size fees.  Non-patent documents include, for example, non-patent literature, transcripts of audio or video recordings, and court documents.  Patent documents, such as U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents, are not subject to the document size fees. 

Question SE22:  Would a translation of a patent document be subject to the document size fees?

No, translations of non-English language patent documents are also not subject to the document size fees.

Question SE23:  Will blank pages in a non-patent document be counted for the purposes of the document size fee?

Yes, the Office will use an automatic page counter that will not subtract blank pages from the total page count for the non-patent document.  This policy is consistent with the Office policy for application size fees.

Question SE24:  How are the document size fees calculated?

Non-patent documents having 21 - 50 pages are subject to a fee of $170, which must be submitted with the request.  Non-patent documents having greater than 50 pages are subject to an additional fee of $280 for each additional 50-page increment, or a fraction thereof, which must also be paid at the time of filing the request.  For example, if a journal article having a length of 145 pages is submitted as an item of information which forms part of a request for supplemental examination, a document size fee of $730 is due upon the filing of the request.  The $730 document size fee is calculated by adding the $170 fee for 21 – 50 pages, and two additional fees of $280 for each additional 50 pages, or a fraction thereof (i.e., a $280 fee for 51 – 100 pages, and a second $280 fee for the remaining 45 pages, which is a fraction of a 50-page increment).

Question SE25:  What types of documents are subject to the requirement for a summary of the relevant portions of the documents, including citations to the particular pages containing the relevant portions?

Any document, other than the request, that is over 50 pages in length is subject to the summary requirement.  “Any document” includes both patent and non-patent documents. 

Processing a Request for Supplemental Examination

Question SE26:  How will the Office treat a request for supplemental examination from a patent owner?

Within 3 months from the filing date of a request for supplemental examination from a patent owner, the Office will determine whether any of the items of information filed with the request raises a substantial new question of patentability.  If a substantial new question of patentability is found for any item of information, then the Office will order an ex parte reexamination of the patent.

Question SE27:  What standard applies in a supplemental examination?

In a supplemental examination, the Office will determine whether any item of information presented in the request raises a substantial new question of patentability.  The substantial new question of patentability standard is triggered when there is a substantial likelihood that a reasonable examiner would consider an item of information important in determining the patentability of the claimed invention.

Question SE28:  If the Office determines that an item of information raises a substantial new question of patentability and orders an ex parte reexamination, do the existing rules for an ex parte reexamination apply?

An ex parte reexamination ordered as a result of an ex parte reexamination will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each substantial new question of patentability without regard to whether it is raised by a patent or printed publication.

Question SE29:  How will a supplemental examination terminate?

The Office will conclude a supplemental examination by issuing a certificate of supplemental examination.  The certificate will indicate the results of the Office’s determination as to whether any item of information filed by the patent owner in the request raised a substantial new question of patentability.

Question SE30:  What benefit does a patent owner gain by seeking a supplemental examination for a patent?

The patent owner can immunize the patent against allegations of inequitable conduct by completing a supplemental examination.  Specifically, information considered, reconsidered, or corrected during a supplemental examination cannot be the basis for rendering a patent unenforceable for inequitable conduct, so long as the supplemental examination and any resulting ex parte reexamination are completed before the civil action is brought.  The patent owner, however, cannot secure inequitable conduct immunization for information raised in a civil action brought before a supplemental examination.

Question SE31:  Are there any consequences if the patent owner commits a material fraud on the Office during a supplemental examination?

If a patent owner commits a material fraud on Office during the supplemental examination, then the Office may confidentially refer the matter to the U.S. Attorney General and may take other action.

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Miscellaneous

Question MISC1:  When will the examination for registration to practice before the Office in patent matters be updated to include questions drawn to the Smith-Leahy America Invents Act?

The Smith-Leahy America Invents Act includes a number of provisions with varying effective dates.  Additionally, many of the provisions require that the USPTO issue rules to implement new procedures. 

The Office presently does not have a set schedule for updates to the registration examination to include changes made by passage of the patent reform bill.  However, the Office expects the registration examination will undergo a number of changes in the next eighteen months as new laws, regulations, and procedures become effective.

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