Update on Implementation of American Invents Act Effective As of September 16, 2012

By Dennis Clarke and James McEwen

On September 16, 2011, the “Leahy-Smith America Invents Act” (AIA) was signed into law. The AIA makes the most substantial changes in U.S. patent law in decades and sets various dates on which these changes are to take effect.

The most profound of those changes is the switch to a first-inventor-to-file system, in place of the current first-to-invent practice in the U.S. This change takes effect only for applications originally filed on or after March 16, 2013. However, on September 16. 2012, other major changes will take effect, including the possibility of requesting inter partes review and other post-grant trial procedures before the newly renamed “Patent Trial and Appeal BoarcL” This paper will predominantly relate to the new requirements relating to declarations and assignments and other miscellaneous provisions that have an effective date of September 16, 2012. The new trial proceedings are discussed briefly hereinbelow.

Applicability Date for Rules Relating to New Declarations

The new rules concerning

(1) the inventor’s oath or declaration, and

(2) the ability of an assignee to file an application as applicant

apply only to patent applications filed under 35 USC § 111 or 363 on or after September 16, 2012.

The new declaration rules do not apply to applications entering the U.S. national stage based on international applications filed before September 16, 2012. With regard to international applications, the new rules apply only to those international applications filed (i e., having an international filing date) on or after September 16, 2012.

In contrast, the rules do apply to any new continuations or divisional applications filed on or after September 16, 2012.  Any new continuation or divisional application filed on or after September 16, 2012, (including by-pass continuations of PCT applications filed in lieu of a national stage application) will require the new forms. For such continuations or divisionals, a copy of the old form may not be filed in the parent. If an application was filed before September 16, 2012, without a declaration and the requirement for filing the declaration comes due after September 16, 2012, the old declaration must be used, as the new requirements apply only if the application itself is filed on or after September 16, 2012.

Note particularly that the wording of the old forms does not include some of the wording required for the new forms, so the use of an old declaration form in an application filed on or after September 16, 2012, will not be accepted by the USPTO. As some applications will continue to be governed by the old rules, it is important to maintain a supply of the old forms for use in those cases.

Emphasis on Use of Applicant Data Sheets

Previously, applicants could use Applicant Data Sheets (ADS) optionally and their benefit was relatively minimal.  However, for applications on or after September 16, 2012, an ADS is required when claiming any form of priority, including both claims to prior US applications and to prior foreign applications.  Therefore, except where the application is first filed in the United States, applicants must ensure that an ADS is used.

The USPTO has also provided an additional incentive to use the ADS: where an ADS is used, the oath or declaration can be submitted at any time prior to the Notice of Allowance, at which time it will be required to be submitted along with the surcharge normally assessed in a Notice of Missing Parts.  This is contrast with existing practice where examination cannot start until the oath or declaration is submitted. Therefore, the use of an ADS will provide an additional advantage and allow for applicants to file applications more rapidly.

New Distinction Between “Applicant” and “Inventor”

One important change in the law and regulations that goes into effect for applications filed on or after September 16, 2012, is the following: there is now a distinction between the “applicant” and the “inventor.” Whereas previously only the inventor could be the applicant in the U.S., now it is permissible for any of the following to file and prosecute the application: (1) the assignee, (2) one to whom the inventor is obligated to assign the invention, or (3) a party who has a “sufficient proprietary interest” in the invention. Nevertheless, regardless of who is designated the “applicant,” each of the inventors must still execute an oath or declaration.

Use of a “Substitute Statement”

While the inventors must sign a new oath or declaration form, the new rules provide that if an inventor is dead or legally incapacitated, cannot be found after diligent search, or refuses to sign, then a “Substitute Statement” can be signed by (1) the assignee or (2) one to whom the inventor is obligated to assign the invention or (3) another party who can prove that it has sufficient proprietary interest in the invention. It is no longer necessary to have heirs or executors sign in the case of a deceased inventor or to submit a detailed proof of facts (as previously required) in the case of an inventor who cannot be found after diligent effort or who refuses to sign. However, in the event that a Substitute Statement is filed, the facts and circumstances supporting the signor’s right to sign the statement should be collected and stored, in the event that the issue arises in an enforcement or validity lawsuit at a later date.

Oath or Declaration of the Inventor

The requirement to have an oath or declaration filed by each inventor can be satisfied by filing:

(1)    an oath or declaration by each inventor,

(2)    a Substitute Statement with respect to an inventor that is dead, legally incapacitated, cannot be found or refuses to sign, or

(3)    an assignment that contains the statements required for an oath or declaration by the inventor.

If the oath or declaration, Substitute Statement, or combined declaration/assignment is filed with an Application Data Sheet (ADS), it is not necessary for the above documents to identify all of the inventors, the post office address, residence and citizenship of the inventors, priority information, etc.  in the oath itself.

While it is no longer required that the declaration state that the person making the declaration acknowledges the duty of disclosure and has reviewed and understands the contents of the application, the regulations still require that the inventor be aware of the duty of disclosure and have reviewed and understood the contents of the application. 

Due Date for Filing Declarations

The filing of the declaration may be postponed until the application is otherwise in condition for allowance, provided that a signed ADS has ben submitted. Thus, if the filing fee is paid at the time of filing, a Notice of Missing Parts will no longer be issued requiring the ffiing of a declaration, at least until such time that a Notice of Allowance is issued. Nevertheless, it is our recommendation that the declaration or other appropriate paper be filed as soon as possible after filing the application to avoid possible patent term adjustment and other ramifications.

Requirements for Assignees and for Those with Appropriate Proprietary Interest in the Invention

If the applicant is the assignee, it will be necessary to record the assignment from the inventors to that assignee in the Assignment Branch. If the applicant is “one to which the inventor is obligated to assign the invention,” e.g., as a result of an employment agreement, but no assignment has been obtained, it will be necessary to record in the Assignment Branch a copy of the employment agreement or other contract that obligates the inventor to assign the invention. If the applicant is one who has “a sufficient proprietary interest” in the invention, then it is necessary to file a petition and proof of pertinent facts supporting such “interest.” That petition will have to be granted before that applicant can control prosecution. Should such a situation arise, please advise and we will provide you with the details of what is required in order to prove such pertinent facts.

PCT International Applications

With respect to international applications, it is indicated above that the new rules will apply only to international applications filed internationally on or after September 16, 2012. The date the application enters the U.S. national stage is not relevant to whether the old or new law applies. When filing a new international application on or after September 16, 2012, you should bear in mind that it is no longer necessary to designate the inventors as “applicants for the U.S. only.” Because the new law and rules permit (1) the assignee or (2) another person to whom the inventor is under an obligation to assign the invention or (3) who otherwise shows sufficient proprietary interest in the matter to be named as the applicant, such a person can be the applicant for the purpose of the U.S. designation in the international application. This will alleviate many of the difficulties currently encountered as a result of this requirement, for example, of obtaining the signatures of all of the applicants/inventors in the case of withdrawals. Now, only the “applicant’s” signature will be required.

A declaration of inventorship may currently be submitted as part of the PCT application, as provided for in PCT Rule 4.1 7(iv), for example. However, until the PCT regulations are changed, it will not be possible to use this PCT declaration in any international application filed on. or after September 16, 2012. It is our understanding that WIPO is in the process of amending the rules to take into account the changes in the statute and regulations in the United States, but these will likely not go into effect until January 1, 2013.

Post-Grant Trial Procedures

It is important to note that September 15, 2012, is the last date on which an applicant can ifie for inter partes reexamination under the old rules. The procedures for inter partes review, which will replace inter partes reexaminations as of September 16, 2012, will be quite different, as the review will be more like a trial that is heard by a tribunal of administrative patent judges rather than being considered by an examiner, Furthermore, it is expected that the attorney time and, therefore, the costs, will increase significantly for inter partes review under the new law, with the fee for filing an inter partes review petition being $27,200.00 (plus $600.00 for each claim over 20) while the current inter partes reexamination fee is $8,800.00.

Please also note that inter partes review will only be available for patents that have issued more than nine months prior to the date of filing of the request for inter partes review. It is otherwise applicable to all patents regardless of their issue date. Prior to September 16, 2012, inter partes reexamination had been available even for recently issued patents, but was not available for patents that issued prior to the effective date of the inter partes reexamination regulations.

The AIA barely changes the ex parte reexamination process. The major change is the significant jump in the fee for ex parte reexamination beginning on September 16, 2012: from $2,520.00 to $17,750.00.

Except for “covered business methods,” the post grant review system (with its broad base of potential challenges) will only be available to challenge granted patents that are filed as applications after the March 16, 2013, date of changeover to the “first-inventor-to-file” system. Therefore, except for “covered business methods,” post grant review challenge will not be in effect for quite some time.

If you have any question about post-grant review, please let us know and we will provide more detailed explanations. Please understand that we have had very substantial experience in interference practice under the old Board practice and the new post-grant administrative trials will use very similar procedures as had been used in such interferences. Thus, we feel that we will be able to “hit the ground running” when these new procedures go into effect, and we look forward to serving your needs in such post-grant “trials.”


We stand ready to answer all of your questions and to provide all of the assistance needed to navigate the U.S. Patent practice under the AIA and implementing regulations.


2 thoughts on “Update on Implementation of American Invents Act Effective As of September 16, 2012

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