USPTO Seeks Input on Implementation of Leahy-Smith America Invents Act

By Donald Zuhn --

The U.S. Patent and Trademark Office recently established a website to provide information and seek input on the implementation of the Leahy-Smith American Invents Act, which the House of Representatives passed on June 23.  Although the Office notes that the legislation is still pending before the Senate and "neither its passage nor enactment can be presumed," the Office has decided "to proactively engage with the public to best prepare for the timely and effective implementation of the legislation should it be enacted."

Noting that implementation of the legislation will require "a series of . . . expeditious rulemaking proceedings," the new website indicates that the process of implementing the legislation might be facilitated by collecting input and comments from stakeholders and the public prior to enactment of the legislation.  The Office points out, however, that any input received will not be treated as a formal request for comments or a rulemaking, and that if the legislation is enacted, the Office will issue formal notices of proposed rulemaking.

The website provides five categories of "implementation documents":

• Patents
• Board of Patent Appeals and Interferences (BPAI)
• Fees and Budgetary Issues
• Congressionally-Directed Studies and Reports
• Miscellaneous

For the "Patents" category, the Office provides a 6-page list of potential items to aid the public in focusing its comments with respect to that category, and a single page list of changes having effective dates of 60 days or less.  Under the "Board of Patent Appeals and Interferences (BPAI)" category, the Office provides a 3-page list of potential items to aid the public in focusing its comments with respect to that category.  The "Fees and Budgetary Issues" category includes a fee setting flow chart and a timeline for setting fees under § 10 of the legislation.  Under the "Congressionally-Directed Studies and Reports" category, the Office provides a table listing the seven reports, two studies, and single program that are mandated by the legislation.  The "Miscellaneous" category currently lists no implementation documents.

The website also provides a list of resources, including a useful 6-page section-by-section summary of the changes to be implemented by the Leahy-Smith American Invents Act.

Comments should be submitted to the attention Hiram Bernstein, Senior Legal Advisor, Office of Patent Legal Administration (Patents and Miscellaneous); Michael P. Tierney, Administrative Patent Judge, Board of Patent Appeals and Interferences (Board of Patent Appeals and Interferences); Michelle Picard, Senior Advisor for Financial Management, Office of the Chief Financial Officer (Fees and Budgetary Issues); or Janet Gongola, Associate Solicitor, Office of the Solicitor (Congressionally-Directed Studies and Reports), and should also reference one of the five categories and the specific issue being addressed in the subject line.  Comments can be submitted by e-mail to:  [email protected], or by regular mail to:  Mail Stop Comments-Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Hiram Bernstein.

Comments

[EG]

Don,

I realize that if the AIA is passed, there's going to be extensive rule making required. But I view Kappos call now for comments on such rule making to be premature. Until we know the final contours of the AIA, we're likely to waste much effort on provisions which may change, or which might not even remain in the AIA.

[Critique on USPTO Understanding of Leahy-Smith Act]

EG,

I look at this as another opportunity to press the Patent Office to one of its duties - helping create policy.

To that end, I have already provided a rather lengthy first glance point by point critique of the sectional summary.

That critique has been publicly posted at:
http://www.patentlyo.com/patent/2011/08/patently-o-bits-bytes-by-lawrence-higgins.html

[EG]

Critique,

Thanks, I saw what you posted on Patently-O and have printed it out.