Effective September 16, 2012 under the AIA, the following important changes take effect for corporate entities applying for patent protection:
- Allowed to be “Patent Applicant”. Corporate entities can now file patent applications in their own name instead of the name of the inventors as previously required. Basically, any corporate entity that can show a proprietary interest in the patent rights will be able to apply for patent protection as the “patent applicant”.
- Must be Filed by Registered Patent Attorney. Included within the new changes are requirements that corporate entities cannot file patent applications pro se(including provisional patent applications) and now must file patent applications via a U.S. Registered Patent Attorney.
A good discussion regarding the new rule changes is located at Patenty-O.
The USPTO announced today the creation of the After Final Consideration Pilot (AFCP) which will provide for amendment of some patent applications after a Final Office Action has been received. Prior to the pilot program, after a Final Office Action has been issued, a patent applicant typically was unable to make amendments to the patent application. The AFCP allows for possible amendment of patent applications after a Final Office Action in the following situations:
- The amendment places the application in condition for allowance by canceling claims or complying with formal requirement(s) in response to objection(s) made in the final office action.
- The amendment places the application in condition for allowance by rewriting objected-to claims in independent form.
- The amendment places the application in condition for allowance by incorporating limitations from objected-to claims into independent claims, if the new claim can be determined to be allowable with only a limited amount of further consideration or search.
- The amendment can be determined to place the application in condition for allowance with only a limited amount of further search or consideration, even if new claims are added without cancelling a corresponding number of finally rejected claims.
- The amendment can be determined to place the application in condition for allowance by adding new limitation(s) which require only a limited amount of further consideration or search.
- The response comprises a perfected 37 CFR 1.131 or 37 CFR 1.132 affidavit or declaration (i.e. a new declaration which corrects formal defects noted in a prior affidavit or declaration) which can be determined to place the application in condition for allowance with only a limited amount of further search or consideration.
The USPTO has issued Guidelines for Consideration of Responses After Final Rejection. It is expected that the new guidelines will help alleviate the Request for Continued Examination (RCE) backlog that has occurred at the USPTO.
A U.S. patent application is automatically published 18-months after the earliest effective filing date unless a Nonpublication Request is included with the patent application filing papers. A patent application for an invention is required to be published if it is subject to a foreign patent application or an international patent application – or if the applicant intends to file such a non-U.S. patent application.
Neustel Law Offices has published a detailed article called Patent Application Publication which provides additional information regarding the publication of patent applications including publication strategies.
The general rule is that provisional patent applications are not published by the U.S. Patent Office. However, there are situations where a provisional patent application may become publicly available for the public to inspect. See http://www.patent-ideas.com/Provisional-Patent-Applications/Are-Provisional-Patent-Applications-Published.aspx for more information about the publication of provisional patent applications and the possible public availability of a provisional patent application.
The U.S. Patent Office released a new page that will provide up-to-date information about the current status of the U.S. Patent Office (e.g. current first office pendency, current application backlog, fiscal year production, number of patent examiners, etc.). There is some good data on this Data Visualization Center by the USPTO for those interested.
The link to the Data Visualization Center is http://www.uspto.gov/dashboards/patents/main.dashxml.