Patent Reform Update: First-to-File, Roundtables, Roadshow

Over the past year, the U.S. Patent and Trademark Office (PTO) has been busily implementing provisions of the Leahy–Smith America Invents Act (AIA) in advance of the effective dates of the law’s most significant changes to the U.S. patent system. Several earlier proposed rules are now final and will be effective in September. Other proposed rules are now out for public comment and will be effective by March 2013.

Most recently, the PTO issued a notice of proposed rulemaking and examination guidelines for the first-inventor-to-file (FITF) provisions of the AIA. The law converts the system under which PTO examines and approves patent applications from a first-to-invent system to a first-to-file system, which more closely aligns with international patent systems. All patent applications filed after March 2013 will be subject to the new system. Advocacy has been monitoring the rulemaking and conducting outreach with patent experts, small businesses, trade organizations, and university tech-transfer officers to determine where PTO has been granted discretion to tailor its rules to ensure that small entity stakeholders transition smoothly to the new patent system. PTO  is also conducting significant outreach with the patent community and is hosting a roundtable to discuss the FITF rulemaking at its Alexandria headquarters on September 6.

Additionally, PTO is bringing a roadshow to eight cities in September to share information about several final rules implementing the AIA which became effective on September 16. The final rules relate to provisions for an inventor’s oath/declaration, preissuance submissions, citation of patent owner statements, supplemental examination, inter partes review, post grant review, and covered business method review. The roadshow kicks off in Minneapolis and ends in New York City, with stops in Atlanta, Denver, Detroit, Houston, Los Angeles, and the PTO campus in Alexandria, Virginia. At these events, PTO officials will explain the final rules and answer audience questions. The agency has also indicated that it will be discussing the proposed FITF rules at the roadshow events. For more information, contact Janet Gongola, patent reform coordinator, at (571) 272-8734, or

—Jamie Saloom, Assistant Chief Counsel for Advocacy

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