July 17, 2012

Press Release 12-42

USPTO Publishes Final Rules Governing Preissuance Submissions

Changes will implement provisions of the America Invents Act

Washington - The United States Department of Commerce’s United States Patent and Trademark Office (USPTO) has published final rules to implement the preissuance submission provision of the Leahy-Smith America Invents Act (AIA). The preissuance submission final rules appear in the Federal Register and set forth the procedure that a third party must follow to submit patents, published patent applications, or other publications of potential relevance to the examination of another’s pending patent application. The preissuance submission provision of the AIA becomes effective on September 16, 2012, and applies to any patent application filed before, on, or after the effective date.

“The preissuance submission provision in the America Invents Act aims to bring the most relevant prior art to the examiner’s attention as early as possible during prosecution to enhance examination effectiveness and efficiency,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “The agency is please to publish the preissuance submission final rules in the Federal Register several weeks before September’s effective date of the provision to give stakeholders ample time to learn the requirements of the final rules.”

In the coming weeks, the USPTO expects to publish additional final rules in the Federal Register for other AIA provisions that become effective on September 16, 2012. Those provisions include inventor’s oath/declaration, supplemental examination, inter partes review, post grant review, and covered business method review. Additionally, the Office is planning a series of cross-country “roadshows” in September 2012 to discuss the preissuance submission final rules and various other final rules with stakeholders. The roadshows are scheduled to be held in Alexandria, Va., Atlanta, Denver, Detroit, Houston, Los Angeles, Minneapolis, and New York. More information about the roadshows can be found on the AIA micro-site, www.uspto.gov/AmericaInventsAct.

For non-press inquiries about the preissuance submission final rules, contact Nicole D. Haines, Legal Advisor, (571) 272-7717, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy.

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

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