America Invents Act – New provisions come into force
25th September, 2012
Several provisions of the America Invents Act have come into force from 16-9-2012 i.e. one year after the law was enacted. The provisions, among others, relate to post grant review, inventor's oath or declaration, supplemental examination, inter partes review and priority examination for important technologies.
Leahy-Smith America Invents Act was enacted in September, 2011 and will be coming into force partly every 6 months or so till September, 2015 when the provisions for submission of implementation report are brought into force. Most of the provisions however will be effective by March, 2013 when statute for first-inventor-to-file comes into force.
The new provision effective 16th September, 2012 streamlines the requirements for the inventor’s oath or declaration, and permits a substitute statement in lieu of an oath or declaration in certain circumstances and permits a person to whom the inventor has assigned, or is under an obligation to assign, the invention, or who otherwise shows sufficient proprietary interest in the matter, to make the application for patent. Hitherto, a person to whom the inventor had assigned an invention could file and prosecute an application for patent, but the inventor was considered the applicant.
Rules of practice have also been revised to harmonize the practice regarding foreign priority claims with the practice regarding domestic benefit claims, by requiring that both foreign priority claims and domestic benefit claims be set forth in an application data sheet.