PTO Reviewing Comments Regarding First-to-File Rulemaking

In 2012, the Office of Advocacy provided input to numerous federal agencies on key regulatory proposals that have a disproportionate impact on small businesses. The Patent and Trademark Office’s overhaul of the U.S. patenting system is one of these critical areas. All comment letters and fact sheets summarizing them are available on Advocacy’s website.

The U.S. Patent and Trademark Office (PTO) is continuing to move forward in implementing the Leahy-Smith America Invents Act (AIA), and is reviewing the public comments it has received regarding its proposed rules and examination guidelines concerning the “first-inventor-to-file” (FITF) provisions of the AIA. The majority of comments PTO received focus on the controversial issue of the PTO’s interpretation of the AIA’s grace-period provisions, which allow inventors and third parties to make certain public disclosures regarding an invention before filing a patent application, without jeopardizing the filer’s ability to receive a patent at a later date.

On October 4, Advocacy filed public comments on the proposals after conducting outreach with small entities, including nonprofit research and educational institutions. These stakeholders expressed strong concerns that PTO’s interpretation is inconsistent with congressional intent and would have chilling effects on innovation in the academic setting, as well as within the startup community. Advocacy urged the PTO to consider alternative interpretations of the law.

The draft final regulations are currently being reviewed by Office of Information and Regulatory Affairs of the White House Office of Management and Budget; they will take effect March 16, 2013. Interested stakeholders should contact Assistant Chief Counsel Jamie Belcore.

—Assistant Chief Counsel Jamie Belcore

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