Group 2 Rule Making Effort in Final Stages

Since the enactment of the Leahy-Smith America Invents Act (AIA), and even before, the USPTO has been busy fashioning new rules to implement the various provisions of the legislation. The USPTO has been aggressively seeking public comment prior to publishing the proposed new rule notices due to the significant amount of changes introduced by the legislation and the short time time frame.

The Office has grouped the various rule packages. Group 1 related to rules that needed to be provided immediately. Group 2 is directed to provisions that will become available 12 months after enactment. These proposed rules are expected to be introduced in late December or early January. The topics covered by Group 2 are as follows:

Group 2 Rulemakings
Subject of Rule Making Section of the AIA
1 Inventor’s oath / declaration 4
2 Third party submission of prior art for a patent application 8
3 Supplemental examination 12
4 Citation of prior art in a patent file 6
5 Umbrella set of rules for contested case procedure N/A
6 Inter partes review 6
7 Post grant review 6
8 Transitional program for covered business methods 18
9 Definition of technological invention 18
10 Derivation proceeding 3

The USPTO is hoping to receive comments on the Group 2 topics by November 15, 2011 (and actually preferred comments be submitted by yesterday). All of the major bar associations are actively collecting comments for submission. Attached is a helpful survey of the various issues relating to the post grant provisions put together by the IPO inter partes practice committee (here).

Comments are welcome.