Final Rules In Effect as of September 16, 2012

September 16, 2012
News | Patents | USPTO

Earlier this year we provided comments on the PTO’s proposed rules regarding the following provisions. The PTO has made those rules final for provisions that went into effect on September 16, 2012, with some changes. Below, we provide our previous discussion of the proposed rules with significant changes highlighted in red.

1) Inventor Declaration Requirements, Assignments and Powers of Attorney 

a) Filing by Assignee (not really) — Despite that the change to the law seemed very clear to allow the assignee to file as applicant (see new statute 35 U.S.C. 118 below), the proposed changes to the rules do not effectively allow that. The proposal still requires that the inventors provide a declaration except in limited circumstances. The assignee or one who the inventors are obligated to assign can only sign the declaration on behalf of an inventor in those situations where the inventor is deceased, incapacitated, cannot be reached or refuses to sign. So, it does at least avoid the need to have a legal representative or heir sign for a deceased or incapacitated person.

35 U.S.C. 118 Filing by other than inventor. A person to whom the inventor has assigned or is under an obligation to assign the invention may make an application for patent. A person who otherwise shows sufficient proprietary interest in the matter may make an application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties. If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient.

a1) Change: Assignee as Applicant — Rules will permit a person to whom the inventor has assigned or is under an obligation to assign (obligated assignee) the invention to be an additional applicant, i.e., in addition to the inventors. Also, the assignee may sign for an inventor who is deceased or otherwise unavailable.

Corresponding rules changes were made for the Declaration requirements. An assignee, an obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter, who is the applicant, may execute a substitute statement in lieu of an oath or declaration if the applicant identifies: (1) the circumstances permitting the person to execute the substitute statement in lieu of an oath or declaration; (2) identifying and indicating the relationship of the person executing the substitute statement with respect to the non-signing inventor; and (3) the last known address of the non-signing inventor. The requirement for submitting rigorous proofs of the circumstances of non-availability of the inventor has been dropped.

For an assignee or obligated assignee filing the application as the applicant, the documentary evidence of ownership (e.g., assignment or employment agreement for an obligated assignee) can be recorded as late as the date the issue fee is paid in the application. For a person who otherwise shows sufficient proprietary interest in the matter to file the application as the applicant, the showing of proprietary interest must be filed in the application, along with a petition and fee.

b) Change: Timing on Filing of Oath/Declaration — In an significant change from the proposed rules, the final rules allow applicants may postpone filing the inventor’s oath or declaration until the application is otherwise in condition for allowance if the applicant provides an application data sheet before examination indicating the name, residence, and mailing address of each inventor; the surcharge for later filing of the declaration is $130.

NOTE: For PCT National Stage applications, not submitting the Declaration with or shortly after filing the application can negatively affect Patent Term Adjustment, as the statutory language of 35 U.S.C. 371(c)(4) requires the filing of the Declaration for entry into the National Stage, and the 14 month time frame for the USPTO to issue a first Office Action or Notice of Allowance cannot start until the Declaration is filed.

c) Combined Declaration/Assignment instead of Combined Declaration/POA — The proposals do not require but urge applicants to move away from filing a Combined Declaration/POA (Power of Attorney) and instead to file a Combined Declaration/Assignment by the inventors and a separate POA from the assignee to the practitioner(s). As the notice explains, this is the more logical course. In most cases, the practitioner(s)’ client is the assignee, not the inventors directly. Having a POA directly from the inventors to the practitioner(s) thus could lead to confusion. The proposals will allow the inventors to sign a combined Declaration/Assignment (and will provide a form therefore). This is advantageous since there is only one paper needed to be signed by the inventors. Important to note that the old declaration forms are no longer acceptable. We can provide you electronic versions of the new Dual Assignment/Declaration, please contact us at

d) Declaration Requirements — Indication of citizenship is no longer required and it is no longer required to state that they are the “first” inventor. Also, it is no longer required to acknowledge the duty of disclosure in the declaration — however, it is important to note that the duty of disclosure still fully applies, as previously. There is also a change in a nuance of the specific language required to state that the application was made or authorized to be made by the person executing the declaration.

e) Change:US National phase Applications — Note that US National phase applications filed based on International applications filed before Sept. 16, 2012, are still applications under the old rules (the International filing date is the actual US filing date), so the declarations for those National stage applications will still need to comply with the old requirements.

f) Change: Continuing (CON/DIV) Applications — Contrary to what many believed, the PTO just recently clarified that (in most cases) you will not be able to use a copy of the declaration from parent applications filed under the old rules in a new continuing application filed on or after Sept. 16, 2012, under the new rules. The above-noted nuance in the specific language required under the new law is not contained in previous declarations. However, in the future, you will be able to use a copy of the parent declaration for continuations when the parent application was filed after Sept. 16, 2012, in compliance with the new rules, and thus contains the new language. Thus, the problem with declarations for continuing applications only applies to a transition period from old to new rule applications.

f1) Declarations for CIP Applications — Will now be treated like other continuing applications, i.e., if the inventors are the same, then you can use the declaration from the parent application, assuming compliance with the new rules.

g) Reissue Declarations — The requirement to state that all errors arose without deceptive intent is removed. The requirement for a supplemental declaration each time that claims are amended is removed. Previously unstated requirement to specifically state whether the claim is broadened by an amendment and clarify that if a claim is broadened in any aspect (even if narrowed in others) then it is considered a broadening reissue is now specifically stated.

g1) Change: Assignee Filing as Applicant — The revised Rules will permit an assignee of the entire interest who filed an application under 35 U.S.C. 118 that was patented to sign the inventor’s oath or declaration in a reissue application of such patent (even if the reissue application is a broadening reissue).

g) Power of Attorney — Several minor changes proposed. Please contact us at to obtain new electronic forms for the Power of Attorney.

g1) Change: New Requirement — Juristic entities (organizations) who seek to prosecute an application, including taking over prosecution of an application, will need to do so via a registered practitioner.

h) Priority Claims — The requirements for priority claims to parent applications (i.e., any of parent cases, US provisionals, PCT and foreign applications) are standardized by requiring that all such claims be listed in an ADS (no longer any need to state any priority claims in first sentence of the specification or declaration).

i) Correction of Inventorship in National phase applications — For applications with an International filing date on or after September 16, 2012, inventorship can be corrected merely by having the correct inventors in the first submission of the declaration.

j) Application Data Sheets — For several reasons, every application (including continuing ones) must now have an ADS. Any ADS not submitted with the filing of the application should be called a Supplemental ADS and must have an attorney/agent signature. The PTO urges use of EFS-Web fillable form rather than scanned ADS to ensure data gets in correctly. It was clarified that providing a Customer Number on the ADS does not result in Power of Attorney, it only provides the correspondence address.

j1) Change/Clarification: Mailing Address — Inventors may use as their mailing address on the ADS (or Declaration) the address where the inventor “customarily receives mail,” including an address where the inventor works, a post office box, or other address where mail is received even if it is not the main mailing address of the inventor.

2) Supplemental Examination 

a) In General — Allows patent owner to have the Office consider, reconsider or correct information relevant to the patent. Items for consideration are not limited to patents or printed publications and not limited in terms of what issues they are directed to. Claim amendments or amendments to benefit claims are not appropriate (if amendments needed, a reissue should be considered). Rules specifically exclude third party comments or participation.

Change: Initially, it was proposed that the request would be limited to 10 items per request (but can make multiple requests). In the Final Rules, the limit is increased to 12. The proposed rules required the requester to provide detailed explanation of each issue and how each item pertains to the issue, and the PTO comments indicated that this description should be quite comprehensive. However, under the Final Rules, the requirements are now similar to the requirements for listing prior art in an ex parte reexam request

b) Timing — Starting Sept. 16, 2012, can be filed on any patent in force at that time.

c) Procedure — Within three months of the filing of a complete request the PTO will issue a Supplemental Examination Certificate indicating whether or not the request raises one or more substantial new questions of patentability. Change: The Final Rules clarify that a Supplemental Examination request that does not fulfill the requirements will not be granted a filing date, however the PTO notes that the requirements for the request have been simplified. If the request raises a substantial new question of patentability, the certificate will indicate that ex parte reexamination has been ordered; which patentee has to pay for (see amount proposed for fees!). For such reexamination, no Patent Owner statement is allowed and any item submitted can be used, contrary to normal reexaminations which are limited to patents or publications. Also, the PTO will consider if material fraud (indicated to be more limited in scope than mere inequitable conduct, as established by Therasense) was committed and take appropriate action.

d) Fees — Change: In the proposed rules the fee for a Supplemental Examination request was $5,180. In the Final Rules this is reduced to $5,140. In the proposed rules the fee for a reexamination ordered as a result of such request was $16,116. In the Final Rules this is increased to $16,120, which is refundable if it is then decided not to institute the reexamination. Thus, such a request could result in $21,000+ just in Government fees.

e) Enforceability Effect — With limited exceptions, a patent shall not be held unenforceable on the basis of that information not being considered, being improperly considered or being incorrect if such information was provided in the Supplemental Examination, i.e., is a means to cleanse possible inequitable conduct issues.

3) Inter-Partes Review changes from proposed rules:

Please find below the proposed rules we previously reported to you along with the relevant changes instituted by the final version of the rules:

a) In General — The rules for IPR proceedings permit a party other than the patent owner to file a petition to institute an inter partes review (IPR) of the patentability of one or more claims of a patent under 35 USC §102 or 35 USC §103 in view of one or more patents or printed publications. The petition must be filed by the later of nine months after the date of the issuance of the patent or, if a post-grant review was instituted, the termination date of the post-grant review. Petitioner will not have standing if (i) the petitioner already filed a civil action challenging the patent’s validity, (ii) the petitioner filed for IPR more than a year after being served with a complaint alleging infringement or (iii) the petitioner is estopped from challenging validity (e.g., because of losing a prior IPR). The proposed rules include a statement that the pendency of the review proceeding should normally be no more than one year.

b) Effective Date — Starting September 16, 2012, IPRs can be filed on any patent in force at that time. One proposed rule gives the USPTO Director the authority to impose a limit on the number of IPRs during the first four years after this date (although USPTO says it does not expect to limit the number at this time).

c) Procedure — Petitioner files a petition (along with the requisite fee and service of filing notice on the patentee) setting forth the standing to file the petition and stating the precise relief requested for each claim challenged. The statement must indentify the claim, indentify the statutory grounds (35 USC §102 or 35 USC §103), indentify the patents or printed publications relied on, provide an explanation of how the claim is to be construed and provide an explanation of how the construed claim is not patentable. Within two months of receiving notice that a petition filing date is granted, the patent owner may file a Preliminary Response setting forth reasons why IPR should not be instituted. No testimonial evidence or amendments are permitted. The patent owner may also file a statutory disclaimer on one or more claims of the patent. If the petition supports a reasonable likelihood that at least one challenged claim is not patentable, the Patent Trial and Appeal Board (the Board) will institute the review proceeding. The patent owner can file a response to the grant of petition (default time is two months from initiation of the review proceeding). The patent owner may, after conferring with the Board, file one motion to amend the claims. Additional motions to amend the claims will require authorization from the Board. The review will be conducted according to the new Board rules.


– The determination by the Director whether to institute an inter partes review is final and not appealable.

– The default period for filing patent owner responses (including preliminary responses) has been extended to three months.

– An additional motion to amend the claims may be authorized upon a showing of good cause or by the joint request of both sides to promote a settlement. Such a motion to amend may be denied where: (1) the amendment does not respond to a ground of unpatentability, or (2) the amendment seeks to enlarge the scope of the claims of the patent or introduce new subject matter

d) Fees – The proposed fee for an IPR request is quite high and will depend on the number of claims for which review is sought. For example, the fee will be $27,200 for 20 or fewer claims and $34,000 for 21 to 30 claims. The fee increases with each increment of 10 claims.


– The final rules maintained the $27,200 fee for the first 20 claims, but eliminated the stair step fee model. Under the final rules each additional claim over 20 will be $600.

– A joinder provision was added to the final rules: Joinder may be requested by a patent owner or petitioner during inter partes, post-grant or covered business method patent reviews, but provides that such a request must be filed, as a motion, no later than one month after institution of any review for which joinder is requested.

4) Post Grant Review (PGR) Proceedings 

a) In General — The rules for PGR proceedings permit a party other than the patent owner to file a petition to institute a post grant review (PGR) of the patentability of one or more patent claims for any reason (not limited to prior art issues). The petition must be completed and filed by nine months after the date of the issuance of the patent. Petitioner will not have standing if (i) the petitioner already filed a civil action challenging the patent’s validity or (ii) the petitioner is estopped from challenging validity due to some prior action. The proposed rules include a statement that the pendency of the review proceeding should normally be no more than one year.

Changes: Grounds for post-grant review include grounds that could be raised under 35 U.S.C. 102 or 103 including those based on prior art consisting of patents or printed publications. Other grounds available for post-grant review include 35 U.S.C. 101 and 112, with the exception of compliance with the best mode requirement.

b) Effective Date — The new rules are effective September 16, 2012, but PGR is only applicable to patents falling under the new “First Inventor to File” provisions of the America Invents Act (AIA). Thus, it is only applicable to patents issued on applications with effective filing dates on or after March 16, 2013.

c) Procedure — The petition must provide a statement of the precise relief requested for each claim challenged. The statement must identify the claim, the specific statutory grounds on which the claim is challenged, how the challenged claim is to be construed and how the construed claim is not patentable under the statutory grounds raised. When the challenge is based on prior art, the petition must specify where each element of the claim is found in the prior art. When the challenge is based on statutory grounds other than prior art, the petition must identify the specific part of the claim that fails to comply with these statutory grounds and state how the identified subject matter fails to comply. It further must contain a statement setting forth, in separately numbered sentences, material facts with specific citations to supporting evidence. When a petition is incomplete, the USPTO will dismiss the request if the deficiency is not corrected within the earlier of one month after the USPTO’s notice of deficiencies or the nine-month statutory deadline.

Change: The petition is limited to 80 pages

The patent owner may file a preliminary response to the petition. The proposed rules limit (i) the time period (two months from official notice), (ii) the scope and (iii) the length of the preliminary response. The response can include evidence but no new testimonial evidence can be presented. At this stage, no amendments can be presented but the patent owner can disclaim one or more claims.

Changes: The proposed rules limit (i) the time period to three months from official notice and the length of the preliminary response is limited to 80 pages. If authorized by the Board, new testimony may be presented.

The Board may proceed with review of all or some of the challenged claims on all or some of the grounds asserted if it determines it is more likely than not (from the initial filings) that a claim is not patentable. Or the Board may deny review on any or all claims or grounds.

If review is granted, the patent owner may file one motion to amend the claims under 35 USC §326(d)(1) in a way that is responsive to the grounds of challenge, but must confer with the Board first.. Further motions to amend require a demonstration of good cause and Board authorization. The petitioner may file supplemental information relevant to any ground for which the trial has been instituted, with filing to be within one month of the date the review is granted. The review will be conducted according to the new Board rules.


Unless a due date is provided in a Board order a motion to amend must be filed no later than the filing of a patent owner response.

A motion to amend may cancel a challenged claim or propose a reasonable number of substitute claims. An additional motion to amend may be authorized when there is good cause showing a joint request of the petitioner and the patent owner.

Once a trial has been instituted a party may file a motion to submit supplemental information which is relevant to a claim.

d) Fees — The proposed fee for a PGR request is quite high and will depend on the number of claims for which review is sought. For example, the fee will be $35,800 for 20 claims or less. The fee increases for each increment of 10 claims.

Changes: An $800 per claim flat fee for each claim in excess of 20 claims

5) Business Method Patents Review 

a) In General — The proposed rules relate to separate procedures for post-grant review of certain “covered business method patents.” Such patents may be challenged on grounds of failing to comply with 35 U.S.C. § 101, 35 U.S.C. § 112 (except best mode), 35 U.S.C. § 102 or 35 U.S.C. § 103. 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 financial products or services, except that the term does not include patents for technological inventions.” The “technological invention” exception pertains to patents reciting a technological feature that is novel and unobvious and solves a technical problem using a technical solution.

Petitioners for review must have been sued for or charged with infringement of the patent. Change: The final rules did not change these definitions, but did provide clarification on the terms “financial products or services” and a “technological invention” in responses to submitted comments. A summary of these comments is provided below.

b) Effective Date — September 16, 2012 on any qualifying patent in force on that date. Change: The final rule allows for review of covered business method patents issued before, on or after September 16, 2012. Unlike post-grant review, patents filed under as a first-to-invent application may be eligible for this proceeding.

c) Procedure — The petition must identify each claim that is challenged, the grounds for the challenge, a proposed claim construction of the challenged claims and specific evidence supporting the grounds for stating that the claim is not patentable. Change: According to the final rule, the Petitioner has the burden of showing that the challenged claims are covered business methods. The USPTO will decide whether to institute a trial within three months after the earlier of: (i) the submission of a patent owner preliminary response, (ii) the patent owner’s waiver of a filing a preliminary response or (iii) the expiration of the time period for filing a patent owner preliminary response. Discovery will not be allowed except with a showing of good cause. Parties may choose to enter alternative dispute resolution rather than proceed to trial. Change: Further, a petition of a covered business method patent may not occur during the time a post-grant review petition may be filed, or less than 9 months after issuance of the patent.

d) Fees — The USPTO fees will be determined by the number of claims being reviewed. For example, 0-20 claims will cost $35,800, with added fees per every additional 10 claims Change: with each additional claim costing $800.

e) Change: Definition of Financial Products or Services — In response to the numerous comments received regarding the proposed definitions, the USPTO provided the following with regard to the term “financial products or services.” This term should be interpreted broadly to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity,” and are limited to products or services of the financial industry. A patent needs only one or more claims directed to a covered business method to be considered a covered business method patent, even if the patent includes claims to other embodiments.

In determining whether a technological invention is applicable, the claimed subject matter as a whole is considered. The Office declined to use the standards for subject matter eligibility under 35 U.S.C. 101 to define whether a patent is for a technological invention. The Office will consider what a technological invention is on a case-by-case basis. Additional guidance will be provided to the public as decisions are rendered applying the definition.

6) Pre-issuance Submissions by Third Parties 

a) Effective Date — Submissions can be made starting on Sept. 16, 2012, for any application filed before, on or after that date (but see timing requirements below). Change: In addition to proposed rules it was clarified that pre-issuance submissions will not be allowed in reissue or reexamination applications.

b) Timing — It must be made before the later of (i) six months after the date the application is published (USPTO’s patent publication) or (ii) the date of mailing of the first office action rejecting any claim (i.e., can be after Restriction/Election requirement). Also, it must be before a Notice of Allowance is mailed. No extension or waiver is possible; if the timing is not met the submission will be discarded.

c) What can be submitted — Only publications, i.e., patents, published applications and other printed publications. Copy must be provided unless it is US patent or US published application. English-language translation required. Submission is to be made with a listing like an IDS form.

d) Concise Explanation Required — The concise explanation required will separately explain why each document is submitted and why each is relevant to examination. The USPTO suggests that specific page and line numbers of the relevant portions of each document be pointed out. A claim chart format is also considered useful. The USPTO says it should not be lengthy but gives no limitation on size. The submitter must also state that the submission complies with the all of the statutory requirements. Also the submitter must state that they are not a person with a duty disclose under 37 C.F.R. §1.56 for the application in question (i.e., they are not the applicant or associated with the applicant).

e) Fees — $180 Fee for each 10 documents or fraction thereof submitted (i.e., 11 docs would be $360). But fee exempted for first submission by that third party (or those in privity with it) which has 3 or less documents.

f) Processing — PTO will first review compliance of submission before it is entered in the official image file wrapper (IFW). There will be a special e-filing interface for pre-issuance submissions to insure it does not appear in the IFW until found compliant. Change: The applicant will be notified when a pre-issuance submission is found to be compliant and entered on the record. In further change from proposed rules, the submitter will notified if the submission is found non-compliant, if the submitter provides an email address for such notice. If found compliant, the submission will be considered by the examiner the same as any document submitted in an IDS and a copy (including explanation) of the submission will be provided with the next Office action. The documents will be listed in the patent as having been considered and the applicant is not required to file a separate IDS for such documents.

g) Anonymity — There is no need to indicate the real party in interest making the submission. However, the person who files must be identified, so can have an unrelated party file for you to maintain anonymity.


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