America Invents Act

Source for information and real time news on implementation of the Leahy-Smith America Invents Act

FAQ

What is the effective date of the best mode provision in the America Invents Act?

The provision became effective on September 16, 2011, and applies to all proceedings commenced on or after that date.

Does the best mode provision impact patent application examination procedures?

No, the specification of a patent application still must include, among other things, the best mode contemplated by the inventor for carrying out the invention.

What is affected by the changes to best mode?

The AIA prohibits an issued patent from being declared invalid or unenforceable for failing to disclose best mode at the time of patent examination.

When does the new provision regarding citation of prior art and written statements become effective?

This new provision became effective on September 16, 2012.

What information may be cited in a patent file under the AIA?

In a patent file, any party may cite patents, printed publications, and written statements regarding patentability made by the patent owner before a federal court or the USPTO. These written statements include pleadings and other court documents.

What is the effective date for the derivation proceeding provision?

The derivation proceeding provisions become effective on March 16, 2013, and apply to any patents or patent applications subject to the first-inventor-to-file system.

What is a derivation proceeding?

A derivation proceeding is a new procedure created by the AIA. It will replace the interference procedure. Its goal is to ensure only true inventors obtain patents by allowing an inventor who claims the same or substantially the same invention in a patent application as an invention in an earlier filed application to initiate an investigation to determine the true inventor.

Who may request a derivation proceeding?

A derivation proceeding may only be requested by an inventor who has filed a patent application claiming the same or substantially the same invention as an earlier filed application and who claims the earlier filed applicant derived the invention from the inventor.

Can a party file a derivation proceeding if it hasn’t filed a patent application on the claimed invention?

No, the party must file a patent application setting out what it believes is the true invention. The party may copy some or all of the challenged application’s content, but the requesting party must file an application along with a petition.

When may a request for a derivation proceeding be filed?

A derivation proceeding must be filed within one year of the first publication of the invention by the earlier applicant whom the request is challenging as not being the true inventor.

What happens if the Patent Trial and Appeal Board determines the earlier applicant is not the true inventor?

If all claims in the earlier filed application are attributed to a different inventor than the named inventor on the application or patent, the Board may correct the naming of the inventor. If only some of the claims in the patent application are attributed to a different inventor, the Board’s inventorship decision will constitute a final refusal of those claims by the Office. If the earlier application has matured into a patent and only some of the claims in the patent are attributed to a different inventor, the Board’s decision will constitute cancellation of those claims.

What happens if the Patent Trial and Appeal Board determines the earlier applicant is the true inventor?

The Board will issue a decision adverse to the claims in the petitioner’s application, and that decision will constitute a final refusal of the claims by the Office. The other claims in the petitioner’s application may be allowed to continue examination.

When does the 15% transition surcharge become effective?

The 15% fee increase became effective on September 16, 2011.

Why did Congress implement a 15% fee increase?

A 15% fee increase was implemented to prevent funding limitations to the Office until fees can be established through the Office’s fee setting authority.

Where do I find the current fee schedule?

The current fee schedule can be found on the USPTO website at http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm.

What are micro entities?

Micro entities are a new class of applicants, distinct from small entities, who are entitled to receive a 75% discount on all fees on which small entities receive a discount. The goal of micro entity status is to allow an affordable patent process to those inventors who would not be able to meet the normal fee requirements.

What is required for an applicant to be a micro entity?

An applicant qualifies for micro entity status if the applicant meets the following requirements:

  1. The applicant qualifies as a small entity.
  2. The applicant has not been named as an inventor on more than four previously filed U.S. non-provisional patent applications, not including applications on which the applicant was an inventor but was under an obligation to assign all ownership rights to an employer.
  3. The applicant did not have a gross income that exceeded three times the median household income in the calendar year preceding the calendar year in which the applicable fee is being paid.
  4. The applicant has not and is under no obligation to assign, grant, or convey a license or other ownership interest to an entity with a gross income exceeding three times the median household income.

When does the micro entity fee discount become effective?

The micro entity fee discount cannot become effective until the Office establishes fees for micro entities using its fee setting authority. The discount will likely become effective when the Office completes the second phase of its fee setting plan in February 2013.

Why did the Office institute the electronic filing incentive, and how much does it cost if the patent application is filed in paper form?

The electronic filing incentive was established in an effort to streamline the application process by cutting down the number of paper filings. If filing in paper form, an additional fee of $400 ($200 for small entities) will be required.

Will the additional fee for filing a patent application in paper form be reduced for micro entities?

The Office has not released any information regarding micro entities and the electronic filing incentive.

What fee setting authority does Congress grant to the USPTO in Section 10 of the AIA?

Congress gives the Director authority to set or adjust fees for any services performed by or materials furnished by the Office, including new Office proceedings. The fees may be altered to recover the aggregate costs to the Office for its services. The Director is able to adjust fees to encourage or discourage applicants or third parties from utilizing particular services.

How is this fee setting authority granted in Section 10 of the AIA different than that provided by 35 U.S.C. § 41?

Section 41 limited the Director’s ability to set fees only to recover the estimated costs to the Office. It also did not allow the Director to set fees for newly established proceedings. Section 10 of the AIA allows the Director to establish fees for new proceedings and adjust current fees to recover the aggregate costs of the Office’s services. It also allows for the Director to adjust costs to encourage or discourage particular services.

When will the new fees be established using the fee setting authority?

While the Office was granted fee setting authority on September 16, 2011, rules implementing such authority need to be established. In a two phase implementation process, the Office first established fees for proceedings that became effective on September 16, 2012. The USPTO published the proposed rules for setting and adjusting fees and the proposed fees for the second phase on September 6, 2012.

How much is the fee for prioritized examination (Track I)

The fee for prioritized examination is $4,800 ($2,400 for small entities). This fee is in addition to other filing fees.

When will prioritized examination become effective?

Prioritized examination became effective on September 26, 2011, but the AIA limits the number of prioritized examinations to 10,000 per fiscal year. This limit may be adjusted by the Office as it sees fit.

How can I comment on the fee adjustment process and fee amounts that may be implemented by the USPTO?

The USPTO is taking comments regarding fees until November 5, 2012, which is 60 days after the September 6, 2012, notice of proposed rulemaking published by the Office. Comments may be submitted to this website by clicking on the Comments tab. These comments will be forwarded to the USPTO for consideration. You may also submit your comment to the USPTO at aia_implementation@uspto.gov.

When does the first-inventor-to-file system become effective?

First-inventor-to-file becomes effective on March 16, 2013, and applies to all patent applications with an effective filing date on or after that date or any patent applications with at least one claim with an effective filing date on or after that date.

What system, first-to-invent or first-inventor-to-file, will apply to continuation or divisional applications filed on or after March 16, 2013?

As long as the effective filing date of all claims in the application is before March 16, 2013, the first-to-invent system will be utilized to examine that patent application.

Will the date of invention/conception continue to be the key date in determining patentability between two inventors under the first-inventor-to-file system?

No, the earlier date of conception will no longer be the deciding factor between two inventors who both filed patent applications. The key date under the first-inventor-to-file system will be the earlier of the effective filing date of the application or the date of the inventor’s public disclosure. Applicants will no longer be able to swear behind an earlier filed patent application.

Will a party who does not invent the patentable subject matter be able to get a patent under the first-inventor-to-file system?

No, only a true inventor of the subject matter will be entitled to a patent. A party that derives the subject matter from the true inventor will not be able to get a patent.

Who may obtain a patent under the first-inventor-to-file system?

An inventor will be entitled to a patent if he/she is a true inventor and was the first to file a patent application or publicly disclose the invention, as long as the public disclosure did not occur more than one year before the effective filing date of the patent application.

When will a public disclosure of the claimed invention before the effective filing date of the application not bar patentability?

A public disclosure will not bar patentability if the disclosure is made by the inventor or another who obtained the disclosed subject matter from the inventor (deriver) and is made no greater than one year before the effective filing date of the application. A public disclosure by a third party will not bar patentability if, before such disclosure by the third party, the inventor or deriver disclosed the subject matter and the inventor or deriver’s disclosure is no greater than one year before the effective filing date.

Are there any changes, besides the one-year grace period for public disclosure by the inventor, to what information or acts before the effective filing date may bar patentability?

Yes, the claimed invention will be barred from obtaining a patent if it is publicly used or on sale (assuming this constitutes a public disclosure) in any country more than one year before the effective filing date. Under the first-to-invent system, the prior public use or sale must be within the United States to bar patentability.

Does the AIA change the requirements regarding obviousness of the claimed invention?

No, the claimed invention will continue to be unpatentable if the differences between it and the prior art are such that the claimed invention would have been obvious before or at the time of the effective filing date to a person of ordinary skill in the art.

Will a public disclosure by the inventor protect the rights of the inventor and the claimed invention in the same manner that a provisional application does?

While a public disclosure will prevent other parties from obtaining a patent in the U.S. on the claimed invention and give the inventor a one-year grace period to file an application, such public disclosure will likely bar the granting of a patent on the claimed invention in foreign countries that require absolute novelty.

What is the effective date for the inter partes reexamination threshold?

The changes to inter partes reexamination became effective on September 16, 2011, and applied to all requests filed between September 16, 2011, and September 16, 2012.

What did the AIA change in the inter partes reexamination process?

The AIA changed the standard for granting a request for inter partes reexamination to reflect the standard of the newly established inter partes review, which replaced inter partes reexamination after the one-year transitional period expired. Before the AIA, the requester had to establish a substantial new question of patentability for the Director to grant a request for inter partes reexamination. The AIA changed this standard such that a request must show there is a reasonable likelihood that the requester will prevail with respect to at least one claim challenged in the request.

How long is the inter partes reexamination threshold period?

Inter partes reexamination terminated on September 16, 2012.

What happens after the inter partes reexamination threshold period has expired?

On September 16, 2012, inter partes reexamination was replaced by the newly created inter partes review. Inter partes reexaminations currently pending will continue under those procedures until completion of the reexamination.

When does inter partes review become effective?

Inter partes review became effective on September 16, 2012, and applies to any proceeding requested after that date.

Who may submit a request for inter partes review?

A petition for inter partes review can only be filed by a person who is not the owner of the patent being challenged. The person, real party in interest, or privy must also not have filed a civil action challenging the validity of the patent before requesting an inter partes review or been served with a complaint alleging infringement of the patent more than one year before the filing for inter partes review.

What is inter partes review?

It is a new post-issuance proceeding established in Section 6 of the AIA. It replaced inter partes reexamination and allows a third-party petitioner to request to cancel as unpatentable one or more claims of the patent only on the grounds of novelty or obviousness (35 U.S.C. §§ 102 and 103).

What information may the petitioner submit in a request for inter partes review?

The petitioner may submit patents and printed publications, as well as other evidence, such as affidavits and declarations, to support the grounds on which the challenge to each claim is based.

Is the standard of review in inter partes review different than that of inter partes reexamination?

The standard for inter partes review is whether there is a reasonable likelihood that the third party will prevail with respect to at least one of the patent claims challenged. Before the AIA, the standard for inter partes reexamination was whether the petitioner showed there was a substantial new question of patentability. The one-year transitional period created by the AIA for inter partes reexamination altered the standard for granting an inter partes reexamination to be the same as that of inter partes review.

When is a third party able to file a petition for inter partes review?

A petition for inter partes review may not be requested before nine months after the grant of the patent or issuance of a reissue, or during the time when a post-grant review is being conducted.

What happens after the Director grants a petition for inter partes review?

Once a petition is granted, both parties will have the opportunity to conduct discovery. The patent owner will then have an opportunity to present evidence detailing why each claim is valid, propose a substitute for any challenged claim, or cancel any challenged claim. The third party will also have an opportunity to present evidence it sees fit to establish invalidity of any challenged claim. In light of the evidence presented, the Patent Trial and Appeal Board will then issue a final written decision on each claim challenged.

Are there any estoppel provisions that limit what the third party may do after a final written decision is made?

Yes, the petitioner, real party in interest, or privy is prohibited from filing a civil action under 28 U.S.C. § 1338, initiating a proceeding before the International Trade Commission, or requesting a proceeding before the USPTO on any ground that was raised or reasonably could have been raised during the inter partes review. Of course, appeal of the final decision is allowed.

What is the effective date of the inventor’s oath or declaration provisions modified by the AIA?

The provisions became effective on September 16, 2012, and apply to any patent applications filed on or after that date.

What documents are sufficient to establish inventor acknowledgement of the patent application?

The AIA provides the inventor two options to acknowledge the patent application. He/she may do so through an inventor’s oath or an inventor’s declaration. The AIA also provides a way in which the patent application may be processed and examined without an inventor’s oath or declaration. The applicant may provide a substitute statement that takes the place of the inventor’s oath or declaration. This may be done if the inventor is deceased, under legal incapacity, or cannot be found or reached after diligent effort. It may also be done if the inventor is under an obligation to assign the invention but has refused to make the oath or declaration.

Are there any changes to what needs to be included in an inventor’s oath or declaration?

Yes, the inventor is no longer required to state his/her country of citizenship or that he/she believes himself/herself to be the first inventor.

When must the inventor’s oath or declaration be submitted during the patent application/examination process?

The inventor's oath or declaration does not have to be submitted until the application is in condition of allowance, but in order to postpone this submission until the date of allowance the application must name the inventor and the inventor's mailing address.

Can a non-inventor file a patent application?

Yes, a non-inventor may file a patent application if the invention is assigned to him/her, the inventor is under an obligation to assign the invention to his/her, or the non-inventor shows sufficient proprietary interest. No proof the inventor refused to execute or was unable to be reached will be required.

Can the USPTO grant a patent to a person or party other than the inventor?

Yes, a patent may be granted to the real party in interest when the application is filed by a person other than the inventor.

What is the effective date on the changes to the OED statute of limitations?

The revised statute of limitations became effective on September 16, 2011, and applies to all conduct in which the time period for initiating a proceeding has not lapsed. The rules implementing this provision became effective on August 30, 2012.

What is the period for initiating a disciplinary proceeding?

The OED may initiate a disciplinary proceeding no later than the earlier of either the date ten years after the misconduct on which the proceeding is based or one year after the misconduct is made known to an officer or employee of the USPTO.

What was the statute of limitations for initiating a disciplinary proceeding before the AIA?

Before the AIA, the statute of limitations was understood to be five years from the date of misconduct pursuant to 28 U.S.C. § 2462.

Were any changes made to the process for initiating a disciplinary proceeding?

No changes were made to the process or to which actions constitute misconduct. The only thing modified by the AIA regarding disciplinary proceedings was the statute of limitations.

What is the effective date for post-grant review?

Post-grant review became effective on September 16, 2012.

What is post-grant review?

Post-grant review is a new post-issue review proceeding that allows third parties to challenge the validity of a patent claim on any grounds that could be raised under 35 U.S.C. § 282(b) paragraphs (2) or (3). This includes any grounds dealing with novelty, obviousness, or insufficient or incorrect specification (except for best mode).

Who can file a request for post-grant review?

A request for post-grant review can be filed by any person who is not the owner of the patent being challenged, as long as the petitioner or real party in interest has not filed a civil action challenging the validity of the patent.

What is the standard for granting a post-grant review?

A request for post-grant review will be granted if the information presented in the petition and the patent owner’s response demonstrates that it is more likely than not at least one claim challenged in the petition is unpatentable. It will also be granted if the petition raises a novel or unsettled legal question that is important to other patents or patent applications.

What documents may be submitted by a third party in a petition for post-grant review?

A third party may submit patents and printed publications, as well as other evidence, such as affidavits or declarations, which support the challenge.

What happens after a request for post-grant review is granted?

Once a post-grant review is instituted, both parties will have an opportunity to conduct discovery. Then the patent owner will have an opportunity to present evidence detailing why each claim is valid, propose a substitute for any challenged claim, or cancel any challenged claim. The third party will also have an opportunity to present its evidence on why each claim challenged is invalid. The Patent Trial and Appeal Board will then issue a final written decision based on the evidence presented.

Are there any estoppel provisions that limit the third party’s actions after a final written decision is made?

Yes, after a final written decision the petitioner, real party in interest, or privy cannot file a civil action under 28 U.S.C. § 1338, initiate a proceeding before the International Trade Commission, or request a proceeding before the USPTO on any ground the petitioner raised or reasonably could have raised during the post-grant review.

When can a third party request a post-grant review?

A post-grant review can be requested no later than nine months after the grant of a patent or issuance of a reissue patent. Of course, a request for post-grant review cannot be filed before the patent is granted.

When do the provisions regarding preissuance submissions become effective?

The provisions became effective on September 16, 2012, and apply to all patent applications filed before, on, or after that date.

Who may submit documents through preissuance submission?

Preissuance submission procedures may only be utilized by third parties.

What documents may be submitted in a preissuance submission?

Documents able to be submitted for consideration in a preissuance submission are limited to patents, published patent applications, and other printed publications.

What changes were made by the AIA to the preissuance submissions process?

The AIA extended the time period in which submissions will be accepted by the USPTO as well as requiring third parties to comment on each document submitted.

When may a third party submit documents during the pendency of a patent application to have them considered by the examiner?

Documents may be submitted before the earlier of: 1) the date of notice of allowance, or 2) the later of six months after the date of publication or the date of a first Office action on the merits. If filed on time and all other requirements are met, the documents will be included in the application’s file wrapper, even if the application has become abandoned.

Must a third party comment on each document submitted in a preissuance submission?

Yes, the submission must contain a concise description regarding each document’s relevancy.

Do the proposed regulations make any changes regarding third-party protests?

While there are amendments to 37 C.F.R. § 1.291, which sets out the rules for filing a protest, these amendments are mainly for clarification and are not intended to change the protest procedure substantially.

When may a third party file a protest?

Third-party protests may only be filed before the earlier of the date of publication of the application or the mailing of the notice of allowance.

When does prioritized examination become effective?

Prioritized examination for new utility and plant applications became effective on September 26, 2011, while prioritized examination for request for continued examinations became effective on December 19, 2011.

What is prioritized examination?

Prioritized examination is an application examination procedure that aims to provide a final disposition on qualified patent applications within twelve months of the granting of prioritized examination.

What must I do to qualify for prioritized examination?

To obtain prioritized status, an applicant must pay a fee of $4,800 (small entity is 50%) on top of the regular filing fee. In addition to the fee, the application cannot contain more than four independent claims, more than thirty total claims, or any multiple dependent claims.

What happens once the application is awarded special status and is allowed to proceed under prioritized examination?

After the application has been given prioritized status, it is placed in the examiner’s special docket, where it will receive expedited service until the time when a final Office action is given, the patent is granted or abandoned, or the applicant performs an action contrary to the intent of prioritized examination.

What actions by the applicant will terminate prioritized examination and cause the application to be entered into the regular application process?

Prioritized examination will terminate if the applicant files a petition for extension of time, a request for continued examination, a request for suspension of action, a notice of appeal, or an amendment to amend the application to include more than four independent claims, more than thirty total claims, or any multiple dependent claims.

If prioritized examination is terminated and my application is entered into the regular application process, can I get a refund of any fees paid?

No, the USPTO will not refund the prioritized examination fee upon termination because termination occurs as a result of the applicant's actions.

Does prioritized examination replace accelerated examination?

No, accelerated examination will still continue to be a tool for applicants who meet its special requirements.

Is there a limit on the number of prioritized examinations the USPTO will accept in a given year?

Yes, the AIA limits the number of applications that can be given prioritized examination to 10,000 per fiscal year, but the USPTO has the authority to adjust this limit as it sees fit.

Are all patent applications eligible for prioritized examination?

No, only nonprovisional utility and plant patent applications filed with no more than four independent claims, no more than thirty total claims, and no multiple dependent claims are eligible. This includes as eligible continuation, continuation-in-part, and divisional applications. Also, any application above, as well as one entering the national stage under 35 U.S.C. § 371, is eligible to receive prioritized examination on a request for continued examination.

How long will it take for a final disposition on a patent application that was examined under prioritized examination?

The goal of prioritized examination is to have a final disposition within twelve months of the granting of the request for prioritized examination.

If my request for prioritized examination is dismissed, can I get a refund of any fees paid?

Yes, the USPTO will refund applicants for the prioritized examination fees ($4,800; $2,400 for small entities) upon dismissal by the Office of the prioritized examination request. This fee will be refunded automatically without the need for the applicant to request the refund. The application fees will not be refunded, for they will be used to process and examine the application under regular examination procedures.

When can a request for prioritized examination be filed when a request for continued examination will be utilized?

The request for prioritized examination must be filed before the mailing of a first Office action after the filing of a request for continued examination.

Can I file a request for prioritized examination on a request for continued examination when the original application was examined under priority status?

Yes, one request for prioritized examination may be granted on a request for continued examination. This is independent from the priority activity regarding the original examination of the application. If an RCE application is awarded priority status, any subsequent RCE applications will not be awarded prioritized examination.

If my request for prioritized examination is dismissed, is there anything I can do to have the dismissal reconsidered?

Yes, an applicant may file a petition under 37 C.F.R. § 1.181 to have the dismissal reconsidered. Also, an applicant may file a new request for prioritized examination for the same application if it is a request for continued examination. Be cautious when petitioning the dismissal of a request for prioritized examination, for the dismissal could be for the sole reason that the 10,000 priority application limit has been reached and not for the reason that there were errors or deficiencies in the request itself.

When will the USPTO begin testing the provisions established by the America Invents Act?

On January 31, 2012, the USPTO started testing two provisions (prioritized examination and inter partes reexamination threshold) established by the AIA and one provision (ex parte patent appeals) established through other rule changes. Recent policy has been to test new material soon after its implementation, and the USPTO has indicated it will begin testing the provisions with an effective date of September 16, 2012, on or soon after October 2, 2012. The rest of the provisions, such as first-inventor-to-file, will likely appear on the exam on or shortly after their March 16, 2013, effective date.

Will the USPTO continue to test old provisions and practices (the first-to-invent system) after it begins testing the provisions established by the America Invents Act?

Yes, the USPTO is expected to continue to test old provisions and practices even after it incorporates the AIA material into the exam. This is because the old provisions and practices will continue to be in effect on applications with an effective filing date before March 16, 2013.

Where can I find information on the requirements to sit for the patent bar exam and how to register for the exam?

Information dealing with the requirements to sit for the patent bar exam and registering for the exam can be found on the USPTO’s General Requirements Bulletin or at its website.

How can I submit comments to the USPTO regarding the AIA?

Comments may be submitted one of three ways. First, comments on any topic may be submitted to this website by clicking on the Comments tab at the top of this page. These comments will be forwarded to the USPTO for consideration. Second, if the topic on which you are addressing is open for public commenting, submissions may be made to the USPTO by email at http://www.uspto.gov/aia_implementation/comments.jsp. Third, if the topic on which you are addressing has not yet been opened for public commenting, submissions may be made to the USPTO by email to aia_implementation@uspto.gov.

If the topic has been closed to public commenting, may I still submit a comment on that issue?

If the topic is closed to public commenting, you may still submit a comment to aiarulemaking.com. Unfortunately, since the USPTO is under tight deadlines regarding its rulemaking schedule, it has indicated it will not accept comments for consideration after the topic has been closed for public commenting.

Can I submit a comment only for consideration on aiarulemaking.com, or will all comments be forwarded on to the USPTO?

Yes, you may submit comments only for consideration on this website. To do this, indicate in your comment that you do not wish for the comment to be forwarded on to the USPTO.

When does supplemental examination become effective?

Supplemental examination became effective on September 16, 2012, and can be utilized on all patents issued before, on, or after that date.

What is supplemental examination?

Supplemental examination is a new post-issuance proceeding that allows patent owners the opportunity to submit any information believed to be relevant to the patent that was not considered, inadequately considered, or incorrectly considered during the examination of the patent application.

Who may file a request for supplemental examination?

A request for supplemental examination may only be filed by the owner of the patent.

What is the standard for granting a request for supplemental examination?

A request for supplemental examination will be granted if there is a substantial new question of patentability.

What happens after a request for supplemental examination is granted?

If a request for supplemental examination is granted, an ex parte reexamination will be instituted with the information submitted by the patent owner included in the reexamination considerations.

What effect does supplemental examination have on unenforceability of the patent?

Generally, a patent will not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrectly considered during the initial examination if the information was presented to the Office during supplemental examination.

What is the effective date of the tax strategy provision created by the AIA?

The provision became effective on September 16, 2011, and applies to all patent applications pending on, or filed on or after, that date. It also applies to any reexamination or post-grant proceedings on patents issued on or after September 16, 2011.

What changes to tax strategy patentability were made by the AIA?

Applicants will not be able to rely solely on the novelty or non-obviousness of a tax strategy embodied in their claims to distinguish those claims from the prior art. Any strategy for reducing, avoiding, or deferring tax liability is insufficient to differentiate a claimed invention from the prior art. This does not apply to the component of the invention that is a method, apparatus, technology, computer program product, or system that is used solely for preparing a tax or information return or that is used solely for financial management, provided it is severable from any tax strategy or does not limit the use of any tax strategy by any taxpayer or tax advisor.

Will I still be able to obtain a patent on my invention if it contains a tax strategy?

Yes, you may still be able to obtain a patent as long as the tax strategy is not the only novel or non-obvious component of the claimed invention.

What is the effective date of the transitional program for covered business method patents?

TPCBMP became effective on September 16, 2012, and applies to all qualified patents issued before, on, or after that date. The program will expire on September 16, 2020.

What is the transitional program for covered business method patents?

TPCBMP is a specific post-issuance review proceeding which only applies to patents that claim “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Patents for technological inventions do not qualify for the transitional program.

What patents are considered technological inventions so as to not be included in the transitional program?

The determination of what is a technological invention will be on a case-by-case basis that considers whether the claimed subject matter as a whole recites a technological feature that is novel and non-obvious over the prior art and solves a technical problem using a technical solution.

Who may file a petition to initiate a transitional proceeding?

A petition may be filed only by a person (third party) who is not the owner of the patent which is being challenged and that person, the real party in interest, or a privy has been sued for or charged with infringement under the patent.

What standard for granting a transitional program is used?

The standard for granting a transitional program is the same as that for granting a post-grant review: the petitioner must show that it is more likely than not at least one claim challenged in the petition is unpatentable.

On what grounds may a patent be challenged in a transitional proceeding?

A petition can only challenge the validity of a patent on a ground raised under 35 U.S.C. §§ 102 and 103 (novelty and obviousness).

Are there any estoppel provisions that limit what the third party may do after a final written decision is made?

Yes, after the final written decision the petitioner, real party in interest, or privy may not file a civil action under 23 U.S.C. § 1338 or initiate a proceeding before the International Trade Commission on any ground the petitioner raised during the transitional proceeding. Of course, the petitioner has the right to appeal the decision.

When may a third party request a transitional proceeding?

A transitional proceeding can be requested no sooner than nine months after the grant of the patent or issuance of a reissue.