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America Invents Act Brings Changes to U.S. Patent Filing Procedures

January 17, 2013

Patent law in the United States is currently in the midst of reform. The America Invents Act (“AIA”) imposes a number of changes to the U.S. patent process. Some of these changes are substantial changes to the patent landscape (e.g. the change from a first-to-invent to a first-inventor-to-file regime), while others are more administrative, but arguably have a more immediate and direct impact on day to day interactions with the United States Patent and Trademark Office (USPTO). One example of the latter is the recent change to procedural requirements and forms required when filing a new U.S. patent application.

Rule changes under the AIA, which took effect September 16, 2012, have altered the requirements for the Application Data Sheet (“ADS”) and Inventor Oath & Declaration practices at the USPTO. The AIA also allows for the “Inventor(s)” of the invention and the “Applicant” for the patent to be different entities at the time of filing (a separation previously not recognized by the USPTO).

The key factor determining whether a given patent application is subject to the “old” rules or the new AIA rules is the effective filing date of the application: if this date is before September 16, 2012, then the “old” USPTO forms apply; if this date is on or after September 16, 2012, then the new AIA forms and procedures apply. For example, the new USPTO rules will apply to all new U.S. patent filings, divisionals and continuations (including by-pass continuations filed in lieu of a national phase entry) filed on or after September 16, 2012. For requests for continued examination (RCE’s) and national phase entries under 35 USC 371, the original filing date of the application (or its international filing date) remains its effective filing date and therefore the existing (old) declarations must be used. A simple rule applies in that, if the application is given a new serial number, then the new AIA rules apply.

For a typical U.S. patent application filing, forms with notable changes include the ADS and the Inventor’s Oath & Declaration. The new ADS includes separate fields to identify “Applicant(s)” and “Inventor(s)”, which may be different entities. Also, the information on the ADS will be considered binding by the USPTO, so it is important to ensure that any applicant information provided on the ADS is consistent with assignments and/or other chain of title documents. The new Inventor’s Oath & Declaration contains updated wording not found in the old declaration, meaning that previous declarations or declarations sworn using the “old” form are no longer acceptable under the AIA rules. Therefore, replacement declarations may be required when filing a continuing application. Further, each inventor must execute a new declaration, which could be problematic if inventors have left company or are otherwise unreachable. However, the AIA also includes new, streamlined procedures for dealing with instances where an inventor cannot be located or refuses to co-operate.

While not the most glamorous or dramatic of changes, understanding the new filing requirements can help prevent last-minute scrambling to obtain new signatures from all named inventors when filing a continuing application, and can help reduce delays and expense during the filing process.

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Patricia Folkins, B.Sc., Ph.D. (Chem.), is a partner with Bereskin & Parr LLP and head of the firm’s Chemical practice group.

Kevin Shipley, B.A., B.E.Sc. (Mech. Eng.), J.D. is an associate lawyer in Bereskin & Parr LLP's Patent practice group.

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Author(s):

Patricia Folkins Patricia Folkins
B.Sc. (Honours Chem.), Ph.D. (Org. Chem.)
Partner
905.817.6101  email Patricia Folkins