First-Inventor-to-File Rules Remain Learning Experience for PTO, Officials Say
The U.S. Patent and Trademark Office’s creation and implementation of first-inventor-to-file (FITF) rules under the America Invents Act (AIA) continues to be a learning experience for the agency a year after AIA’s FITF provisions went into effect, PTO officials said during an agency event Tuesday. The FITF provisions in AIA, which went into effect March 16, 2013, were meant to redefine prior art in order to simplify the U.S. patent system and harmonize it with systems in other countries, said PTO Deputy Director Michelle Lee. PTO used the FITF language in AIA and stakeholder input to create the final rules it issued last year, she said.
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The rules determine when a patent application qualifies to be examined under AIA’s FITF provisions and when it doesn’t, said Cassandra Spyrou, quality assurance specialist in PTO’s Technology Center 2800. Applications that were fully filed before FITF rules went into effect are always considered to be subject to pre-FITF examination rules, just as applications that solely deal with material filed after the FITF start date qualify for FITF examination, Spyrou said. An application filed on or after the FITF start date may be considered a “transition” application that may or may not qualify for FITF rules if it contains at least one foreign priority or domestic benefit claim stemming from a pre-FITF application, she said. Applicants who believe they may fall into the “transition” category will need to make an additional statement claiming that at least one claim qualifies under FITF, Spyrou said.
About 86 percent of pending patent applications qualified for pre-FITF patent examination as of January, while 14 percent qualified for FITF examination, said Tom Hughes, supervisory patent examiner for PTO’s Technology Center 3700. About 72 percent of applications filed after the FITF start date qualified to be examined under pre-FITF rules, while 28 percent qualified for FITF examination, he said. Several other AIA provisions went into effect Sept. 16, 2012, Hughes said. PTO examiners went through multiple rounds of training on the PTO’s FITF rules, including comprehensive small group training sessions that began in August and are set to continue through the end of 2014, he said.
PTO’s ability to identify whether patent applications qualify for FITF examination is dependent on the information applicants provide, Hughes said. PTO software determines whether an application qualifies for FITF, so ensuring the accuracy of serial numbers, filing dates and other information on an application can “make all the difference in the world,” he said. Applicants should also check their filing receipts and be careful about whether they make a “transitional” FITF statement, Hughes said.