USPTO Publishes Proposed Rules Governing First-Inventor-to-File

Washington - The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) today published a proposal to amend the rules of practice in patent cases to implement the “first-inventor-to-file” provision of the Leahy-Smith America Invents Act (AIA). The first-inventor-to-file provision converts the United States patent system from a “first to invent” system to a first inventor to file system. The first-inventor-to-file provision, which takes effect March 16, 2013, also alters the scope of available prior art to apply against a claimed invention in determining the novelty and obviousness of the claimed invention.

In addition to amending the rules of patent practice, the USPTO is proposing examination guidelines to inform the public and patent examiners of its interpretation of the first-inventor-to-file provision of the AIA. The guidelines likewise are intended to advise the public and patent examiners how the changes introduced by the first-inventor-to-file provision impact the sections of the Manual of Patent Examining Procedure pertaining to novelty and obviousness.

“The first-inventor-to-file provision of the America Invents Act, one of its hallmarks, brings greater transparency, objectivity, predictability, and simplicity in patentability determinations,” said Under Secretary of Commerce for Intellectual Property and USPTO Director David Kappos. “At the same time, the provision brings the United States closer in harmonizing our patent law with those in other countries around the globe.”

The first-inventor-to-file proposed rules and guidelines published today in the Federal Register have a public comment period that runs until October 5, 2012. The USPTO also plans to discuss the proposed rules and guidance at a series of “roadshows” scheduled to occur in Alexandria, Va.; Atlanta, Ga.; Denver, Colo.; Detroit, Mich.; Houston, Texas; Los Angeles, Calif.; Minneapolis, Minn.; and New York, N.Y., this September. Further information about the proposed rules and guidelines may be found in the Federal Register Notice: Further information about the “roadshows” may be found on the AIA micro-site available at

For non-press inquiries about the first-inventor-to-file proposed rules, contact Susy Tsang-Foster, Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7711. For non-press inquiries about the proposed examination guidelines, contact Mary C. Till, Senior Legal Advisor, Office of Patent Legal Administration, Office of the Deputy Commissioner for Patent Examination Policy, at 571-272-7755.

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