TRADING TECH EXHIBIT 2020
`IBG ET AL. v. TRADING TECH
`CBM2015-00181
`
`

`
`LEAHY-SMITH AMERICA INVENTS Act (Pub. L. 112-29)
`
`SEC. 26. STUDY ON IMPLEMENTATION.
`(a) PTO STUDY.—The Director shall conduct a study on the manner in which this Act
`and the amendments made by this Act are being implemented by the Office, and on
`such other aspects of the patent policies and practices of the Federal Government
`with respect to patent rights, innovation in the United States, competitiveness of
`United States markets, access by small businesses to capital for investment, and
`such other issues, as the Director considers appropriate.
`
`(b) REPORT TO CONGRESS.—The Director shall, not later than the date that is 4
`years after the date of the enactment of this Act, submit to the Committees on the
`Judiciary of the House of Representatives and the Senate a report on the results
`of the study conducted under subsection (a), including recommendations for any
`changes to laws and regulations that the Director considers appropriate.
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`
`Table of Content
`
`Executive Summary . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9
`Introduction
`The Leahy-Smith
`America Invents Act . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
`
`Implementation of the AIA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12
`
`Implementation Framework and Transparency . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12
`
`Statutory Provision Implementation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .12
`
`AIA Mandated Studies and Report Completion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13
`
`AIA Mandated Patent Programs Establishment. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`Technical Amendments . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`Background
`Appointing a Patent Reform Coordinator. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15
`
`The AIA Online . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .15
`
`Rulemaking . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`Preparing the Workforce for AIA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18
`
`Preparing the Public for AIA . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18
`
`Bargaining Unit Negotiations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .19
`
`Development of the AIA Report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .19
`
`4
`
`Implementation Status . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
`Statutory Provisions - Patent Examination
`Section 6:
`Inter Partes Reexamination Transition Threshold . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20
`
`Section 14:
`Tax Strategies Deemed Within the Prior Art . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .21
`
`Section 15:
`Best Mode Requirement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .21
`
`Section 33(a):
`Human Organism Prohibition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .21
`
`Section 11(h):
`Prioritized Examination. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 22
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`Section 8:
`Preissuance Submissions – Third Party Submission of Prior Art in a Patent
`Application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
`
`Section 12:
`Supplemental Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
`
`Section 4:
`Inventor’s Oath or Declaration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
`
`Section 6(g):
`Citation of Prior Art in a Patent File . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
`
`Section 3(k)(1):
`Office of Enrollment and Discipline (OED) Statute of Limitations . . . . . . . . . . . . . . . 29
`
`Section 3:
`First Inventor to File . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 30
`
`Section 3(e):
`Repeal of Statutory Invention Registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 32
`
`Statutory Provisions - Inter Partes Disputes
`Section 6:
`Inter Partes Review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 33
`
`Section 6:
`Post-Grant Review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 35
`
`Section 18:
`Covered Business Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 37
`
`Section 6:
`Derivation Proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39
`
`Statutory Provisions - Fees and Budgetary Issues
`Section 10:
`Fee Setting Authority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41
`
`5
`
`Section 22:
`Patent and Trademark Office Funding. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 43
`
`Section 10(h):
`Electronic Filing Incentive . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 44
`
`Section 10(g):
`Micro-Entity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 45
`
`Programs
`Section 28:
`Patent Ombudsman for Small Businesses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 46
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`Section 32:
`Pro Bono Program . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
`
`Section 29:
`Diversity of Applicants . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48
`
`Section 23:
`Open Regional (Satellite) Offices. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 48
`
`Studies and Reports
`Section 31:
`International Protection for Small Businesses . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 50
`
`Section 3(m):
`Prior User Rights . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .51
`
`Section 3(k):
`OED Reports – Report on Misconduct Before the Office . . . . . . . . . . . . . . . . . . . . . . . . 52
`
`Section 16:
`Virtual Marking. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 53
`
`Section 23(d):
`Regional (Satellite) Offices . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54
`
`Section 27:
`Genetic Testing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 54
`
`APPENDICES
`APPENDIX I – Summary of Recommendations. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 55
`
`APPENDIX II - Public Outreach – Events/Venues and Speakers . . . . . . . . . . . . . . . . . 56
`
`APPENDIX III – Press Releases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .61
`
`APPENDIX IV – Roadshows. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 62
`
`APPENDIX V – Glossary of Acronyms and Abbreviation List . . . . . . . . . . . . . . . . . . . . 63
`
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`List of Tables
`
`Table I – Implementation and Completion Schedule. . . . . . . . . . . . . . . . . . . . . . 10
`
`Table II – AIA Provisions by Implementation Group . . . . . . . . . . . . . . . . . . . . . . 13
`
`Table III – AIA Studies . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`Table IV – AIA Programs . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14
`
`Table V – Inter Partes Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21
`
`Table VI – Prioritized Examination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23
`
`Table VII - Third Party Submissions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24
`
`Table VIII: Supplemental Examination (SE) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 26
`
`Table IX – Oath and Declaration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 28
`
`Table X: Applications Filed Since 16 March 2013. . . . . . . . . . . . . . . . . . . . . . . . . 32
`
`Table XI: Inter Partes Reviews. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .34
`
`Table XII – Post-Grant Review . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 36
`
`Table XIII – Business Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 39
`
`Table XIV: Derivation Proceedings . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .40
`
`Table XV(a) – Non-Electronic Patent Application Filings . . . . . . . . . . . . . . . . .45
`
`Table XV(b) – Percent of Patent Applications Filed Electronically . . . . . . . . .45
`
`Table XVI - Micro Entity Status . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .46
`
`Table XVII – Ombudsman Program Usage . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47
`
`Table XVIII: Pro Bono Program . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .48
`
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`EXECUTIVE SUMMARY
`
`• Regional (Satellite) Offices - Section 23
`required the USPTO to open three or more
`regional offices within three years of the AIA
`enactment. Budgetary uncertainties disrupted
`the USPTO’s schedule to open these regional
`offices by September 2014. Despite these
`delays, the last two of four permanent offices
`will be open in 2015.
`
`• Genetic Testing - Section 27 of the AIA called
`for the study of a number of issues related
`to confirmatory genetic diagnostic testing
`and a report to the Congress on the findings,
`including recommendations. The USPTO
`began the study, collected written comments
`from the public, and held public hearings.
`However, these efforts were reoriented in
`light of two Supreme Court decisions issued
`during the study period. The USPTO notified
`Congress of the need for further study
`and collected more input. The report was
`submitted to Congress on September 29,
`2015.
`
`As part of the study and reporting process,
`the USPTO identified recommendations for
`further enhancement to the patent law. These
`recommendations address needs in the areas
`of the statute of limitations for disciplinary
`proceedings, inventor’s oath or declaration,
`inter partes disputes, fee setting authority, and
`USPTO funding, and are documented in the
`relevant AIA section in the Implementation
`Status part of the report, and summarized in
`Appendix I.
`
`9
`
`On September 16, 2011, President Barack
`Obama signed the Leahy-Smith America Invents
`Act (AIA), the most significant reform to the
`U.S. patent system in 60 years.
`
`Over the past four years, the United States
`Patent and Trademark Office (USPTO) acted
`to implement the AIA provisions that were
`designed to spur innovation and economic
`growth by streamlining the patent application
`process and enhancing patent quality. This
`report documents the manner in which
`the USPTO implemented the AIA and its
`amendments.
`
`Overall, the USPTO has successfully
`implemented the AIA provisions, established
`the required programs, and carried out the
`required studies. These were done with
`transparency and significant stakeholder and
`public involvement, and as demonstrated, for
`example, through the successful:
`
`• Transition to First Inventor To File in the
`United States;
`
`• Establishment of a new process for a third-
`party to challenge the patentability of granted
`patents outside the federal court system;
`
`• Creation of a prioritized examination
`mechanism for inventors to have their patent
`applications examined in one-third the
`average time; and
`
`• Setting of a new patent fee schedule.
`
`In general, the USPTO was able to overcome
`many obstacles associated with implementing
`the AIA provisions, studies, and programs.
`However, as noted in each section narrative,
`there were some challenges that impeded the
`USPTO’s initial implementation plans in the
`following areas:
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`INTRODUCTION
`
`The Leahy-Smith
`America Invents Act
`
`On September 16, 2011, President Barack
`Obama signed the Leahy-Smith America
`Invents Act (AIA) into law (P.L. 112-29). The
`new law represented more than eight years
`of considerable efforts by Congress, the
`Administration, and stakeholders to modernize
`the U.S. patent system - the most significant
`reform in 60 years.
`
`“I am pleased to sign the
`America Invents Act.  This
`much-needed reform will speed
`up the patent process so that
`innovators and entrepreneurs
`can turn a new invention into a
`business as quickly as possible.”
`—President Obama.
`
`The U.S. patent system originates in the
`Constitution, where the Founding Fathers
`recognized the need to promote the progress of
`science and the useful arts by granting inventors
`the exclusive rights to their discoveries for
`limited periods of time.
`
`This constitutional imperative created a bargain
`between innovators and society whereby
`inventors are encouraged and rewarded through
`exclusive, but limited, rights to their inventions
`in exchange for the disclosure of the knowledge
`behind the invention for others to build upon.
`
`Congress subsequently enacted the U. S. Patent
`Act in 1790 and established the U.S. Patent
`Office in the State Department in 1836. Since
`
`that time, the American economy has grown
`and become more globalized, and technology
`has revolutionized all aspects of American
`life. At the same time, litigation practices have
`changed, and court decisions have highlighted
`the need for modifying the patent law.
`
`Congress responded to these trends by
`considering patent reform while remaining true
`to the original constitutional objectives. In doing
`so, Congress heard from all participants in the
`patent community – researchers, technologists,
`visionaries, patent prosecutors, patent litigators,
`inventors, small businesses, and corporations
`– many with different and often conflicting
`perspectives on the patent system.
`
`With the AIA, Congress aimed to balance
`competing interests, and modernize the United
`States patent system. The AIA contained
`17 provisions of law requiring the USPTO to
`promulgate new regulations, conduct and
`report on studies into various aspects of the
`intellectual property (IP) system, and establish
`new programs to aid certain segments of the
`patent community in filing patent applications.
`
`Out of the many changes to the patent system
`that are discussed in this report, several are
`historically notable:
`
`11
`
`First Inventor to File (FITF)
`The AIA promotes a system of clearer and more
`enforceable patent rights by adopting a FITF
`standard for determining rights to a patent.
`By transitioning to a simpler, more objective,
`and more transparent system for determining
`rights to a patent, the AIA helps ensure that
`independent inventors and small entities are
`able to navigate the patent system on a more
`equitable footing with larger enterprises.
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`conduct seven studies about various aspects of
`IP law and report results to Congress over a four
`year window after enactment. Lastly, the AIA
`required the USPTO to establish four programs,
`also by specified due dates. The USPTO was
`not charged with implementing any of the
`provisions relevant to the court system.
`
`The USPTO committed to implementing
`the AIA with maximum transparency and
`stakeholder and public participation. The
`USPTO used its public outreach activities to
`gather input from its broad spectrum of users,
`including major corporations, small and medium
`enterprises, universities, individual inventors
`and IP practitioners. The USPTO believed that
`implementation decisions that were informed
`by maximum public participation result in a
`stronger, more effective patent system.
`
`Statutory Provision Implementation
`
`The statutory provisions contained in the AIA
`were designed to improve the transparency
`of the patent system, harmonize or simplify
`application filing procedures and/or information
`requirements, expedite examination, and
`provide an alternative forum for challenging
`patentability over the district courts. The 20
`statutory provisions became effective at three
`distinct times. Some went into effect within
`60-days of enactment (Group 1), others became
`effective one-year from enactment (Group 2),
`and the final ones took effect 18 months after
`enactment (Group 3). The table below shows
`the provisions captured in each group.
`
`Patent Trial and Appeal Board (PTAB) and
`Post-Grant Trial Proceedings
`The AIA established a new process before
`the PTAB for a third-party to challenge the
`patentability of granted patents outside
`the federal court system. These post-grant
`proceedings were designed to be a faster and
`less expensive alternative to district court
`litigation for resolving patentability.
`
`Fee Setting Authority and Fee Reserve Fund
`For the first time, the AIA provided the USPTO
`with the authority to set all its fees to recover
`the aggregate costs of the services it provides,
`and to access all the fees it collects.
`
`The purpose of the “America Invents
`Act,” as reported by the Committee
`on the Judiciary, is to ensure that the
`patent system in the 21st century
`reflects its constitutional imperative.
`
`Third Party Submissions of Prior Art
`The AIA permits third parties to submit prior art
`into the record of another’s application. Prior art
`is a term used in the IP community to reference
`information already known to the public. In
`an era with crowdsourcing tools, allowing the
`USPTO to harness the knowledge of the crowd
`helps patent examiners widen the scope of
`their review and offers applicants heightened
`confidence in their patents once issued.
`
`Implementation of the AIA
`
`Implementation Framework and Transparency
`
`The AIA contained provisions that impacted
`both the USPTO and the court system.
`Particular to the USPTO, the AIA contained 20
`provisions of law for the USPTO to implement
`through rulemaking within 18 months of
`enactment. The AIA also required the USPTO to
`
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`
`BACKGROUND
`
`Appointing a Patent Reform Coordinator
`
`To effectively implement the AIA, the USPTO
`appointed a Patent Reform Coordinator to
`manage its implementation activities. The
`Patent Reform Coordinator reported to the
`USPTO Director and was based out of the
`office of the Under Secretary and Director. The
`Coordinator had responsibility to oversee all
`aspects of AIA implementation from rulemaking
`to study execution to program development.
`
`Internal to the USPTO, the Coordinator devised
`an implementation plan and schedule to
`ensure all statutory provisions were timely
`implemented so that the public would be kept
`informed of all implementation steps and could
`participate in the process. The Coordinator
`likewise formed teams and divided the
`implementation activities to be accomplished
`based upon the skill sets of the teams. The
`Coordinator supervised the teams’ work and
`regularly updated the USPTO Director and
`Secretary of Commerce about the progress.
`
`The Coordinator met extensively
`with stakeholder groups
`across the country to explain
`the provisions of the new
`patent law and the USPTO’s
`implementation plan.
`
`External to the USPTO, the Coordinator
`interfaced with the public on all AIA
`implementation activity. As an essential
`vehicle for communication with the public,
`
`the Coordinator established a dedicated
`section on the USPTO website to house all AIA
`implementation information. The Coordinator
`also met with stakeholder groups across the
`country to explain the provisions of the new
`patent law and the USPTO’s implementation
`plan. For example, the Coordinator led three
`multi-city roadshows to educate the public
`about the AIA.
`
`The AIA Online
`
`On September 16, 2011, the “America Invents
`Act: Your Guide to the Law” was launched on
`the USPTO website. The guide features all of
`the USPTO’s implementation documents, such
`as Federal Register Notices and directional
`memoranda to examiners. It also contains
`a blog, Frequently Asked Questions, press
`releases, legislative history documents, and
`a timeline for implementation activities. The
`USPTO updated the guide weekly and used
`it to communicate with the public about the
`implementation efforts on an ongoing basis.
`To follow is a more detailed breakdown of the
`contents of the AIA section of the USPTO
`website:
`
`• Implementation Information. This section
`addressed the specific AIA provisions
`under the main categories of: (1) Patent
`examination, (2) Inter partes disputes, (3)
`Fees and budgetary issues, (4) AIA studies
`and reports, (5) Programs, and
`(6) Implementation status. Specific
`information about implementation activities
`could be found under each category.
`
`• AIA Resources. This section includes
`information dealing with the legislation, such
`as the various bills, and a complete legislative
`history of the AIA (e.g., Senate and House
`debates and votes).
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`• Informational Videos. This section housed ten
`informational videos and four training videos,
`primarily focused on the AIA change to FITF.
`
`• Press Releases and Speeches. This section
`contained a sampling of 83 USPTO
`presentations on the AIA to educate the
`public about the new law and the USPTO’s
`implementation. This section also contained
`34 press releases and 13 Director’s Blogs
`covering aspects of the AIA. See Appendices
`II and III.
`
`• Frequently Asked Questions. This section
`contained answers to questions raised by the
`public about the AIA.
`
`• Comments. To encourage the public to
`submit comments as early as possible in the
`AIA implementation process, a specialized
`Comments section was established through
`which members of the public could submit a
`comment on any topic. The USPTO posted
`all comments received for public viewing.
`Additionally, the USPTO maintained a
`database to track and distribute all comments
`to the relevant USPTO staff for consideration
`in the implementation process.
`
`• Blog. The USPTO maintained a blog to
`regularly provide updates and information
`about its AIA implementation activities,
`including congressional testimony;
`implementation activities/roadshows;
`programs; rulemaking; studies; and reports.
`
`• Roadshows. The USPTO conducted public
`training sessions across the country in
`multiple cities as part of its rulemaking
`process to implement the statutory
`provisions. See Rulemaking section below.
`At the roadshows, USPTO subject matter
`experts explained the various AIA provisions
`and answered questions. The roadshows
`were free and open to the public. This section
`housed all training materials associated with
`the roadshows for easy public access in a
`central location.
`
` – The spring 2012 series included seven
`roadshows, two hearings on the subject of
`genetic testing, and two hearings by the
`Patent Public Advisory Committee (PPAC)
`on fee setting.
`
` – The fall 2012 series included eight
`roadshows that addressed the final rules
`that were, or soon would be, effective.
`
` – The fall 2014 series included seven
`roadshows on implementation of the FITF
`provisions.
`
`Further details and locations of the
`roadshows can be found in Appendix IV.
`
`• Global Impacts of AIA. This section contained
`information about the global impact of
`various provisions of the AIA, such as
`transitioning the U.S. to a FITF system.
`
`• Statistics. This section featured information
`about the public’s use of various provisions
`over time; i.e., preissuance submissions;
`supplemental examination; IPRs; and CBMs.
`
`• Announcements and Upcoming Events.
`This section alerted the public whenever
`the USPTO participated in or held an AIA
`speaking event so the public might attend to
`learn about the new patent law from a USPTO
`expert.
`
`• Subscription Center. This section contained
`a registry for users to subscribe to receive
`automatic email notices whenever the site
`was updated.
`
`Rulemaking
`
`To accomplish its goal of transparency in
`implementing the AIA, the USPTO used the
`federal rulemaking process to its fullest extent
`to inform its stakeholders and the public about
`all aspects of implementation and collect their
`feedback.
`
`As noted earlier, the AIA contained 20
`provisions of law, most of which were
`implemented via rulemaking. The USPTO
`
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`followed the same process when rulemaking
`was needed, as outlined here.
`
`Step 1:
`Publication of a Notice of Proposed Rulemaking
`(NPRM)
`After understanding the statutory requirements
`for a particular provision, the USPTO published
`proposed rules in a NPRM in the Federal
`Register to give public notice. An NPRM
`contains a preamble describing logistical details
`about proposed rules along with the text of the
`proposed rules. The preamble contains three
`parts: (1) a summary, (2) date and contact
`information, and (3) supplementary information.
`
`The “Summary” section identified the issues and
`actions under consideration and also stated why
`the rule was necessary.
`
`Under the “Dates” and “Addresses” section,
`the USPTO invited comments on the proposed
`rule, set a date for comments to be submitted,
`and specified various methods for conveying
`comments, such as U.S. mail, private courier,
`email, and the official federal electronic
`comment portal: www.regulations.gov. The
`USPTO allotted 60 days for the public to
`comment on each of its NPRMs.
`
`In the “Supplementary Information” section, the
`USPTO discussed the merits of the proposed
`solution, cited important data and other
`information used to develop the action, and
`detailed its choices and reasoning. The USPTO
`also identified the legal authority for issuing the
`proposed rule.
`
`Following the preamble, the USPTO published
`the regulatory text of the proposed rules in full.
`The regulatory text set out amendments to the
`standing body of law in the Code of Federal
`Regulations (CFR). If there was no existing law
`in the CFR, which was the situation for most of
`the AIA provisions since they set forth entirely
`new patent procedures, the USPTO described
`the proposed action in a narrative form.
`
`Step 2:
`Public Outreach During the Comment Period
`After the NPRM published in the Federal
`Register, the USPTO engaged in extensive public
`outreach to educate stakeholders about its
`proposed implementation, encourage dialogue
`about its proposals, and collect oral input. For
`instance, the USPTO conducted an extensive
`multi-city roadshow, visiting seven cities and
`reaching more than 1,300 patent community
`members. At each stop, the USPTO held a
`full day program to engage with the public,
`walking attendees through the proposed rules
`and their implications on patent practice. The
`USPTO also webcast programs from at least
`two venues to broaden the audience attending
`public meetings. Finally, the USPTO posted all
`materials on its website to enable those not in
`attendance at a training session to learn about
`the planned implementation.
`
`Step 3:
`Consideration of Public Comments
`Upon receipt of public written comments, the
`USPTO posted all input on the website to foster
`more dialogue. In total, the USPTO received 1,548
`public comments on its various AIA NPRMs.
`The USPTO then modified the proposed rules in
`certain instances based upon public feedback.
`The USPTO made such changes after analyzing
`the pros and cons of each modification.
`
`Lastly, the USPTO prepared written responses
`for all comments to be included in each final rule
`package.
`
`Step 4:
`Clearance of Final Rulemaking
`After considering and incorporating the public
`written comments, the USPTO prepared final
`rules implementing each statutory provision.
`The USPTO circulated its final rules through
`an inter-agency clearance process, providing
`the final rules to the Department of Commerce
`(DOC), Office of Management and Budget
`(OBM), and other agencies for review and
`comment. The USPTO also circulated its final
`
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`rules to its Patent Public Advisory Committee
`(PPAC) for review and comment.
`
`Step 5:
`Publication of a Final Rulemaking.
`After receiving and incorporating any feedback
`stemming from the inter-agency clearance
`process into the final rules, the USPTO issued
`final rules implementing each statutory
`provision. The final rules were structured in a
`way similar to proposed rules and published in
`the Federal Register to provide public notice.
`All final rules were published in the Federal
`Register at least thirty (30) days before they
`became effective to give the public ample time
`to understand the final rules before having to
`comply with them.
`
`Preparing the Workforce for AIA
`
`To prepare the examiner workforce for changes
`resulting from the AIA, the USPTO employed
`a three-phrased approach to coincide with the
`effective dates of the various statutory provisions.
`The USPTO opted for this phased approach to
`introduce examiners to new statutory provisions
`immediately before they were required to apply
`them. That way, the operation of the provision
`and implementing USPTO rules would be fresh
`in the examiners’ minds and result in correct
`application.
`
`In the first phase, the USPTO conducted
`immediate training in October 2011 to educate all
`examiners about the existence of the AIA, provide
`an overview of all provisions at a high level, and
`give detailed direction for the Group 1 provisions,
`which were then effective. The Patent Reform
`Coordinator taught more than 30 in-person and
`webcast classes to large groups of examiners.
`Each training session lasted for one (1) hour,
`including a question-and-answer period.
`
`In the second phase of training, the USPTO
`developed a one (1)-hour computer-based
`training that all examiners were required to view
`for Group 2 provisions. Examiners then could
`pose questions to their supervisors on an “as
`needed” basis. The USPTO opted to employ
`
`this computer-based training style because the
`provisions in Group 2 did not have a direct or
`extensive impact on examiners and therefore they
`did not require as in-depth of training as for the
`Group 1 provisions.
`
`In the third phase of training, the USPTO
`conducted the most extensive and iterative
`training for the FITF provision in Group