Effective 16 September 2012, patent applicants have more options. In addition to prior art, a party will be allowed to submit into a file statements that the patent owner made regarding the scope of any claim during either a federal court proceeding or another USPTO proceeding.
This provision is actually broader than it seems, as “during a federal court proceeding or another USPTO proceeding” includes any out-of-proceeding statement that was filed by the patent owner in a proceeding before a Federal court or the USPTO in which the patent owner took a position on the scope of any claim of the patent. That’s right. In line with the USPTO’s goal of limiting the number of sides of one’s mouth from which a party may speak regarding his invention, such a statement is eligible for submission under CFR § 1.501(a)(2) even if originally made outside of the proceeding.
The new rule – implemented under the America Invents Act – also specifies how the USPTO may use a patent owner’s claim scope statements during ex parte reexamination, inter partes reexamination, inter partes review, post grant review, or covered business method review. The full, final rule is currently available via the USPTO and will be published in the Federal Register on Monday, August 13th.
On August 14th, the USPTO will publish the final rules for:
- Inventor’s oath/declaration;
- Supplemental examination;
- Post grant review;
- Inter partes review; and
- Covered business method review.