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New Rules to Be Set for America Invents Act
- 2/2/2012

Most provisions set forth in the America Invents Act were designed to take effect between the September 16, 2011 Enactment Date and March 16, 2013.  Particularly for those provisions that are to take effect in the future, the U.S. Patent Office is formulating new rules.

Recently, the U.S. Patent Office published proposed rules for implementing the supplemental examination provisions of the America Invents Act.  Additionally, the U.S. Patent Office is proposing to adjust filing fees for ex parte reexamination requests, as well as for petitions filed in ex parte and inter partes reexamination proceedings.  Part of the reason for the fee changes are "to more accurately reflect the cost of these processes."

In connection with the supplemental examination process, U.S. Patent Office Director David Kappos stated, “the supplemental examination provisions will permit a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent.”

The America Invents Act new supplemental examination rules are generally viewed as useful for patentees to make corrections to an issued patent prior to litigation and without fear of inequitable conduct, and may reduce an application of inequitable conduct defenses.  Further, information considered during supplemental examination generally cannot be used in court to support unenforceability.

The proposed rules for supplemental examination and reexamination fees were published in the Federal Register on January 25, 2012, which began a sixty-day public comment period.  During that time, the public is invited to provide written input.

Click Here to view the Federal Register publication regarding the proposed rules and fee changes.