Citation of Prior Art and Written Statements

Overview

Section 6(g) of the America Invents Act amends 35 U.S.C. § 301 to expand the scope of information any party may cite in a patent file to include written statements regarding patentability made by the patent owner before a federal court or the Office. Previously, only patents or printed publications could be cited in a patent file.

These written statements, which may include pleadings and other court documents, can only be used by the Office to determine the meaning of a patent claim in ex parte reexaminations that have already been ordered and inter partes review and post-grant review proceedings that have been instituted.

Upcoming Events/Key Dates

The USPTO implemented this provision by amending 37 C.F.R. § 1.501, which took effect along with Section 6 on September 16, 2012. The USPTO published the final rules on August 6, 2012.