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US Patent and Trademark Office Publishes Rule Changes for the Citation of Prior Art and Written Statements Provision of the America Invents Act


The US Patent and Trademark Office (USPTO) has published Rule Changes to implement Section 6 of the America Invents Act (AIA) which amends the patent laws to create new post-grant review proceedings and replace inter partes reexamination proceedings with inter partes review proceedings.

The new Rules can be found here.

This AIA provision expands the type of information that a patent owner or third party may submit into a patent file. It will allow submission of patent owner statements about claim scope that were made in a federal court or a USPTO proceeding. The provision also defines how the USPTO may use such information during ex parte reexamination, inter partes reexamination, and post grant review. The citation of prior art and written statements provision of the AIA becomes effective on September 16, 2012.

Section 6 of the AIA also provides for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in a post grant review or inter partes review proceeding, expands the scope of information that any person may cite in the file of a patent to include written statements of a patent owner filed in a proceeding before a Federal court or the Office regarding the scope of any claim of the patent, and provide for how such 3 patent owner statements may be considered in ex parte reexamination, inter partes review, and post grant review.

The final rule requires that such submissions must:

(1) identify the forum and proceeding in which patent owner filed each statement, and the specific papers and portions of the papers submitted that contain the statements;
(2) explain how each statement is a statement in which patent owner took a position on the scope of any claim in the patent;
(3) explain the pertinency and manner of applying the statement to at least one patent claim; and
(4) reflect that a copy of the submission has been served on the patent owner, if submitted by a party other than the patent owner.

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