Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act

The United States Patent and Trademark Office (Office) is publishing proposed examination guidelines concerning the first-inventor-to-file (FITF) provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the patent laws pertaining to the conditions of patentability to convert the United States patent system from a ``first to invent'' system to a ``first inventor to file'' system, treats United States patents and United States patent application publications as prior art as of their earliest effective United States, foreign, or international filing date, eliminates the requirement that a prior public use or sale activity be ``in this country'' to be a prior art activity, and treats commonly owned or joint research agreement patents and patent application publications as being by the same inventive entity for purposes of novelty, as well as nonobviousness. The changes to the conditions of patentability in the AIA result in greater transparency, objectivity, predictability, and simplicity in patentability determinations. These guidelines will assist Office personnel in, and inform the public of how the Office is, implementing the FITF provisions of the AIA. The Office is concurrently proposing in a separate action (RIN 0651-AC77) published elsewhere in this issue of the Federal Register to amend the rules of practice in patent cases to implement the FITF provisions of the AIA.

Agency Contact: Mary C. Till, Senior Legal Advisor (telephone (571) 272-7755; email mary.till@uspto.gov) or Kathleen Kahler Fonda, Senior Legal Advisor (telephone (571) 272-7754; email kathleen.fonda@uspto.gov), of the Office of the Deputy Commissioner for