Changes and Examination Guidelines To Implement the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act; Reopening of the Period for Comments, 61735 [2012-25042]

Agencies

• DEPARTMENT OF COMMERCE
• United States Patent and Trademark Office

[Federal Register Volume 77, Number 197 (Thursday, October 11, 2012)]
[Proposed Rules]
[Page 61735]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-25042]



[[Page 61735]]

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

[Docket Nos.: PTO-P-2012-0015 and PTO-P-2012-0024]
RIN 0651-AC77


Changes and Examination Guidelines To Implement the First-
Inventor-to-File Provisions of the Leahy-Smith America Invents Act; 
Reopening of the Period for Comments

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments; reopening of the comment period.

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SUMMARY: The United States Patent and Trademark Office (USPTO) 
published a notice of proposed rulemaking and a notice of proposed 
examination guidelines to implement the first-inventor-to-file (FITF) 
provisions the Leahy-Smith America Invents Act (AIA). The USPTO also 
conducted a roundtable to obtain public input from organizations and 
individuals on issues relating to the USPTO's proposed implementation 
of the FITF provisions of the AIA. The Office has received several 
requests for additional time to submit comments on the USPTO's 
implementation of the FITF provisions of the AIA. The USPTO is 
reopening the comment period to provide interested members of the 
public with an additional opportunity to submit comments to the USPTO.

DATES: The deadline for receipt of written comments in response to the 
notice of proposed rulemaking published July 26, 2012 (77 FR 43742) and 
notice of proposed examination guidelines published July 26, 2012 (77 
FR 43759) is November 5, 2012.

ADDRESSES: Comments on the notice of proposed rulemaking should be sent 
by electronic mail message over the Internet addressed to: fitf_rules@uspto.gov. Comments may also be submitted by postal mail 
addressed to: Mail Stop Comments--Patents, Commissioner for Patents, 
P.O. Box 1450, Alexandria, VA 22313-1450, marked to the attention of 
Susy Tsang-Foster, Legal Advisor, Office of Patent Legal 
Administration.
    Comments on the proposed examination guidelines should be sent by 
electronic mail message over the Internet addressed to: fitf_guidance@uspto.gov. Comments may also be submitted by mail addressed 
to: Mail Stop Comments--Patents, Commissioner for Patents, P.O. Box 
1450, Alexandria, VA 22313-1450, marked to the attention of Mary C. 
Till, Senior Legal Advisor, Office of Patent Legal Administration, 
Office of the Deputy Commissioner for Patent Examination Policy.
    Comments on the notice of proposed rulemaking and the proposed 
examination guidelines may also be sent by electronic mail message over 
the Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (https://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.
    Although comments may be submitted by postal mail, the Office 
prefers to receive comments by electronic mail message over the 
Internet because sharing comments with the public is more easily 
accomplished. Electronic comments are preferred to be submitted in 
plain text, but also may be submitted in ADOBE[supreg] portable 
document format or MICROSOFT WORD[supreg] format. Comments not 
submitted electronically should be submitted on paper in a format that 
facilitates convenient digital scanning into ADOBE[supreg] portable 
document format.
    The comments will be available for public inspection at the Office 
of the Commissioner for Patents, currently located in Madison East, 
Tenth Floor, 600 Dulany Street, Alexandria, Virginia. Comments also 
will be available for viewing via the Office's Internet Web site 
(https://www.uspto.gov). Because comments will be made available for 
public inspection, information that the submitter does not desire to 
make public, such as an address or phone number, should not be included 
in the comments.

FOR FURTHER INFORMATION CONTACT: Mary C. Till, Senior Legal Advisor 
(telephone (571) 272-7755, email mary.till@uspto.gov); or Kathleen 
Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754, email 
kathleen.fonda@uspto.gov), of the Office of the Deputy Commissioner for 
Patent Examination Policy.

SUPPLEMENTARY INFORMATION: The AIA was enacted into law on September 
16, 2011. Public Law 112-29, 125 Stat. 284 (2011). Section 3 of the AIA 
amends the patent laws to: (1) Convert the United States patent system 
from a ``first to invent'' system to a ``first inventor to file'' 
system; (2) eliminate the requirement that a prior public use or sale 
activity be ``in this country'' to be a prior art activity; (3) treat 
U.S. patents and U.S. patent application publications as prior art as 
of their earliest effective filing date, regardless of whether the 
earliest effective filing date is based upon an application filed in 
the U.S. or in another country; and (4) treat commonly owned patents 
and patent application publications, or those resulting from a joint 
research agreement, as being by the same inventive entity for purposes 
of 35 U.S.C. 102 and 103. The changes in section 3 of the AIA take 
effect on March 16, 2013.
    The USPTO published a notice of proposed rulemaking and notice of 
proposed examination guidelines on July 26, 2012, to implement the FITF 
provisions of section 3 of the AIA. See Changes to Implement the First 
Inventor to File Provisions of the Leahy-Smith America Invents Act, 77 
FR 43742 (July 26, 2012), and Examination Guidelines for Implementing 
the First-Inventor-to-File Provisions of the Leahy-Smith America 
Invents Act, 77 FR 43759 (July 26, 2012). The notice of proposed 
rulemaking proposes changes to the rules of practice in title 37 of the 
Code of Federal Regulations (CFR) for consistency with, and to address 
the examination issues raised by, the changes in the FITF provisions of 
the AIA. The proposed examination guidelines set out the Office's 
interpretation of 35 U.S.C. 102 and 103 as amended by the AIA, and 
advise the public and the Patent Examining Corps on how the changes to 
35 U.S.C. 102 and 103 in the AIA impact the provisions of the Manual of 
Patent Examining Procedure (MPEP) pertaining to 35 U.S.C. 102 and 103. 
The USPTO also conducted a roundtable to obtain public input from 
organizations and individuals on issues relating to the USPTO's 
proposed implementation of the FITF provisions of the AIA. See Notice 
of Roundtable on the Implementation of the First Inventor to File 
Provisions of the Leahy-Smith America Invents Act, 77 FR 49427 (Aug. 
16, 2012).
    The Office has received several requests for additional time to 
submit comments on the USPTO's implementation of the FITF provisions of 
the AIA. The USPTO is reopening the comment period to provide 
interested members of the public with an additional opportunity to 
submit comments to the USPTO.

    Dated: October 5, 2012.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2012-25042 Filed 10-10-12; 8:45 am]
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