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Implementation of the America Invents Act

贯彻实施新专利法 –《美国发明法案》

John Richards 约翰 理查兹

Ladas & Parry LLP 莱达思&派瑞律师事务所

电子邮件:E-mail: 版权所有:Copyright: Ladas & Parry LLP 2012

Key Issues 新法重点

• Rights of First Inventor to File 优先申请权
• Oath, Declaration and Assignee Filing 宣誓,发布及受让人的递交
• Prior art etc. Submissions 现存技术对比文件等的提交
• Inter partes review (replacing Inter partes Re-Examination) 复审程序变更
Post Grant Review (Post-Grant Opposition) 授权后复审程序 • Fees 收费标准
• Prior Commercial User Rights 商业使用优先权
• Best Mode 最佳模式
Most of the main features took effect on September 16th, 2012. Rules implementing these changes were issued in July and August 2012.

新法条例于2012年7 至 8月期间陆续公布,绝大部分于2012年9月 16日正式生效。

The new novelty provisions come into effect on March 16, 2013 and proposed rules have been published. However before noting those changes, we mention a change that came into effect earlier.


Prioritized Examination 优先审查

Since September 26, 2011, for applications having no more than 30 claims and no more than 4 independent claims, it has been possible to request prioritized examination when filing the application by payment of a $4,800 fee ($2,400 for small entities) and the publication fee without having to comply with the normal requirements for making an application special.

Since December 19, 2011, this possibility has been extended to applications for which a request for continued examination has been filed.

《美国发明法案》规定了授权某些条件下给予专利申请优先审查。自2011年9月26日, 申请人可以在提交申请时,缴纳4,800美元(小实体为2,400美元)和出版费用,以要求给予优先审查。被优先审查的申请不能超出4个独立的权利要求,同时申请总数不能超出30权利要求。


First Inventor to File (Section 3) 优先申请权(第三条)

The one year grace period after publication to file a patent application has existed in U.S. patent law since 1839 and is very important to universities and inventors with limited means.


The United States has been under pressure for many years to switch from a first to invent to a first to file system.


The new law provides that as long as a patent application is filed within one year of one’s own publication, one is protected from any additional publication of the same invention by others.


The changes relating to novelty discussed previously come into effect 18 months after enactment that is on March 16, 2013.

新法规中不同条款的生效日期也不相同。有些法规变更已开始生效,还有一 些,比如之前提到的有关新颖性的条例, 将在新法设定的18个月后生效,即2013年3月16日。

The whole of 35 USC 102 will be replaced by novelty bars set out in new 35 USC 102(a) and exceptions including a grace period and exemption for prior unpublished applications that are commonly owned in new 102(b).

对于原专利法中的35 USC 102条例,被转到《新发明法案》中的35 USC 102(a)条例下;而原法中包括有关宽限期和对事先未公开的申请的豁免的“例外”条例,则被列入新法的35 USC的 102(b)条例下。

The provisions in the current law under which the right to a patent could be lost if there had been abandonment suppression or concealment of the invention or because a foreign patent had issued and on had not filed in the US within a year of its filing date have been repealed.


New 35 USC 102(a)(1) – 新专利法 35 USC 102(a)(1)部分

Subject to the grace period of 102(b) 受限于102(b)条例中的宽限期

A person shall be entitled to a patent unless: 任何人应有权利获得专利,除非:

The claimed invention was patented, described in a printed publication, or in public use, on sale or “otherwise” available to the before the effective filing dare of the claimed invention


Effective filing date includes a foreign or domestic priority date which is validly claimed for the US application.. 有效申请日期包括美国国内外的所有有效申请日期。

The bars apply wherever in the world the act takes place. 这些限制适用于世界各地 。

Additionally, the contents of any earlier-filed but later-published application or patent which names another inventor will also be a bar unless an exception applies.


In addition to adopting a European-style world wide “public availability” bar, the law also expands the current U.S. on-sale bar to acts outside the United States.

To be “on sale” does NOT require that any sale has been made. Under current case law, for the on-sale bar to apply all that is required is that more than one year prior to the filing of the patent application both of the following acts occurred: 实际销售并不需要. “销售”限制要求的是,提交专利申请时的一年前,下列两种行为均发生:

there was an acceptable commercial offer for sale; and 有一个可接受的商业要约出售; 和

the invention was developed to the point that it was “ready for patenting.” 发明已发展到可以申请专利的阶段。

Furthermore under current law one’s own commercial secret use is deemed to be “public” for the purposes of determining novelty 此外,根据现行法律,在决定新颖性时,己方商业秘密的利用被视为是“公共”的。

As noted below, it has been argued that the new language may change both of these – but unless and until the courts say otherwise, the prudent view is that the law has not changed.

正如下文所述,有人已经认为,新的语言可能会改变这些 – 但是,除非及直至法院有相反的意见,否则,谨慎的看法是,法律并没有改变。

“Or Otherwise” “或以其他方式”

There is some uncertainty as to what is the effect the words “or otherwise” in the phrase “public use, placing on sale or otherwise making available to the public”.


Under current U.S. law, to be “on sale” does NOT require that the nature of the invention has been disclosed.


The PTO has discussed this in its proposed Examination Guidelines, inviting comment “on the extent to which public availability plays a role in on sale prior art” and that it is not setting out a position on this. But hints that it believes disclosure of the nature of the invention is required. Similarly the PTO view seems to be that under the new law for a use to be destructive of novelty as a public prior use requires that there has been a disclosure of the invention and that the current law which creates a legal fiction that any commercial use (for example a secret method of making a commercial product )is public will change. However, we must wait for a final decision of the courts on these issues.


Exceptions under new 35 USC 102(b) – 新法35USC 102(b)条例中的例外

Grace period – 宽限期

The grace period applies to disclosures made within one year prior to the effective filing date the act was by an inventor, joint inventor or others obtaining the disclosed subject matter directly or indirectly from the inventor or joint inventor or is by a third party but follows such a disclosure by or deriving from the inventor or joint inventor.


The effect of these changes is therefore to create a “first inventor to publish as long as you file within one year” rule. Unlike the law in most other countries having a grace period, publications etc. by others after one’s own publication will not count as prior art as long as one files within one year of one’s own first publication.

这些变化的的效果: 出版发明的一年内申请专利的第一发明人,将获胜.

The PTO has issued proposed rules as to what will be required to have prior art excused on the basis that it was made by or derived from a disclosure made by the inventor.


The question of when a publication by a third party may be excused because it follows a publication by or deriving from an inventor is discussed in proposed PTO Examination Guidelines. These take the view that when an examiner is considering whether a prior disclosure within the grace period may be excused based on an earlier disclosure by the inventor or deriving from him “[e]ven if the only differences between the subject matter in the prior art disclosure that are relied upon [by the examiner] and the subject matter publicly disclosed by the inventor before such prior art disclosure are mere insubstantial change or only trivial or obvious variations, the exception does not apply”

由第三方发布时可以原谅: “即使审查员依赖的现有技术披露中的题材和被发明者公开披露的题材之间唯一的区别仅仅是微不足道的改变或明显的变化,此例外不适用”。

Exceptions Applicable when prior art is previous unpublished U.S. patent application naming another inventor

Three exceptions are possible: 1 where the invention of the earlier application was obtained directly or indirectly from the inventor of the later application; 2) where the inventor of the later application had published the invention prior to the filing of the first application (and filed his or her own application within one year of that publication; and 3) the prior application was commonly owned or subject to an obligation to assign to common ownership no later than the effective filing date. or was the result of a joint research agreement with the owner of the earlier application.


有3种可能的例外情况:1)先前的申请是从之后的申请的发明人那里直接或间接得来的;2)之后的申请的发明人在递交第一个申请前已经发表了发明 (在发表的一年内递交了他/她自己的申请);3)之前的申请在有效申请日或之前被共同拥有,或是与早前申请的拥有人的共同研究协议的结果。

The exception based on common ownership opens the possibility of removing earlier applications as prior art by buying them before filing the later application.


The PTO has issued proposed rules setting out what will be required to show common ownership or the existence of an appropriate joint research agreement.


Contests between Applications and Patents as to whether one application derived from Inventors of the Other 申请和专利之间的的竞赛 –-一个申请是否来自于另一个的发明人

For applications filed after the law change comes into effect, interference practice will be replaced by “derivation proceedings” in which the only issue will be whether the first party to file in fact derived the invention from the second party to file. Derivation proceedings will have to be commenced within one year of the publication of a claim in the earlier application setting out the allegedly derived invention.


Derivation Proceedings will be dealt with by the renamed Patent Trial and Appeal Board, which replaces the Board of Patent Appeals and Interferences. 派生诉讼将由专利审判和上诉委员会代替专利上诉和干扰委员会处理。

For earlier applications, the old law continues to apply 对于较早的申请,旧法继续适用。

Transition 过渡

The transitional provisions of the new law provide that any application that contains a claim or at any time contained a claim that has an effective filing date on or after March 16, 2013, will be subject to the new novelty provisions, although claims in such applications having an effective filing date prior to March 16, 2013 will additionally still be subject to the first to invent principles of the old law.


Proposed rules issued by the PTO provide that in order to make a determination as to which law applies, in any non provisional application filed on or after March 16, 2012, claiming the benefit of the filing date of a foreign application, a provisional application, or is a continuing application claiming the benefit of an earlier non-provisional application filed earlier than that date but which contains or at any time contained a claim with an effective date on or after that date must provide a statement to that effect.


Additionally if any such post March 2013 application does not contain any claim having an effective date after March 16, 2013 but contains subject matter that is not in the pre March 16, 2013 application from which priority is claimed, a statement to that effect is required.


Such statements are required by the later of four months after filing or entry into national phase etc or sixteen months from priority.


Furthermore, because of the importance of knowing early which law applies:

a) claims to priority will have to be made on an application data sheet within four months. 要求优先权必须在四个月内,在申请数据单上注明。

b) priority documents will have to be filed within the same time frame unless available from a document exchange. 优先权文件必须在相同的期限内提交, 除非它们可从某个文件转递服务中获得。

c) any later filing will require a petition stating that the delay was unintentional and could be subject to questioning by the PTO. 如果文件提交晚了,你还必须提交一份请愿书,解释说,延迟是无意的. 还有,美国专利商标局可能质疑你

Which law is Better for the Applicant? – 哪个法对申请人更有益?

For applicants in U.S. – in most cases probably the old law – so try to file before March 16, 2013 with full disclosure.


For foreign applicants, the change of the grace period to run back from foreign priority date may make it advantageous to proceed under the new law – but beware of the fact that foreign public use or offer for sale will be a bar.


Does Change Affect Relative Value of Patents and Trade Secrets? 改变是否影响专利和商业秘密的相对价值?

The new law repeals those provisions of the present act that might prevent one from securing a valid patent if one has previously abandoned, suppressed or concealed the invention. To this extent the prior risk that if one had kept something secret without using it commercially could act as a bar has been abolished. One may therefore see adoption of “rolling provisional” strategies in which provisional applications are filed and abandoned repeatedly and a non-provisional application only filed if someone else comes into the field to take advantage of this. The position after prior commercial use depends on the meaning of “otherwise” as discussed above.

根据新的法律, 即使你已经放弃,压制或隐瞒了发明,仍然可以获得专利。因此,可以利用“滚动临时”的专利战略。根据“滚动临时”的专利战略,临时申请反复的被递交然后被遗弃,只有当其他人进入此领域时,非临时申请才会被递交。

In addition, the new Prior Commercial Use Defense discussed below means that someone who has operated a process as a trade secret will no longer run the risk of being forced to cease operating it if someone else obtains a patent for it.


But the basic problems with trade secret protection remain: secrets can leak and they provide no protection against a third party making the same invention.


Oath, Declaration and Assignee Filing (AIA Section 4)

宣誓,发布及受让人的申请递交 (美国发明法案 第4条)

35 USC 118 is amended to provide for filing in the name of an assignee or one to whom the inventor is under an obligation to assign the invention. Otherwise filings can be made “on behalf of and as agent for the inventor,” but only “where appropriate to preserve the rights of the parties.”

修改后的35 USC 118规定了以受让人的名义递交申请的有关事项。否则,只有“在适当的情况下,为保护各方的权利”,可以“代表发明者代理的”递交申请。

On August 14, 2012, the PTO announced that it had reversed the position that it took in the proposed rules that applicants should normally be inventors and that filings in the name of an assignee should be limited to situations where there were problems in requiring the inventor to be the applicant. It is now accepted that an assignee may be the applicant in all situations. However an oath or declaration by the inventors is still required.

新法规定,专利申请人不再必须是专利发明人, 但发明人的宣誓或声明程序仍不可省略。

Before discussing this change in detail, it should be noted that under 35 USC 118: “If the Director grants a patent on an application filed under this section by a person other than the inventor, the patent shall be granted to the real party in interest and upon such notice to the inventor as the Director considers to be sufficient”. New 37 CFR 1.46(e) requires that any change in the real party in interest must be notified to the Office no later than payment of the issue fee. Under the pre-AIA law, an applicant showing a sufficient proprietary interest could make an application “on behalf of and as agent for the inventor,” but only “where appropriate to preserve the rights of the parties”, only if no inventor could be found or willing to sign. Under new 37 CFR 1.46(a), these requirements have been removed, but proof of the pertinent facts and a showing that such action is appropriate to preserve the rights of the parties is still required.

在35 USC 118下,如果非发明人递交的申请被批,此专利将被授予真正的权益人。新的37 CFR 1.46(e)要求,任何真正权益人的改变必须在缴付专利授权费的时候或之前通知专利局。 在旧法下, 申请人只要显示其有足够的权益,只要是适合保护相关方利益的,就可以代表发明人申请。 但在新的37 CFR 1.46(a)下,旧的要求被废除,但是必须要证明相关事实和显示此举是合适的。

Oath or Declaration (37 CFR 1.63) – 宣誓或声明

The new rules make significant changes in what is required in the inventor’s oath or declaration:


This No longer has to state the inventor’s nationality or that he/she believes that she/he is the “first” inventor of the claimed subject matter, only “an” inventor.


The inventor’s name should be his/her “legal name” with no requirement to identify first and last names.


The inventor’s mailing address may now be given on an application data sheet instead of the oath or declaration.


Further more 37 CFR 1.63(c) is amended to read:

37CFR 1.63(c)被修改如下:

“A person may not execute an oath or declaration unless the person has reviewed and understands the contents of the application, including the claims and is aware of the duty to disclose to the Office all information known to be material to patentability as defined in§ 1.56″ 任何人不得执行宣誓或声明,除非此人已审阅和理解申请的内容,包括权利要求,并意识到有责任向商标专利局披露所有的对决定专利权很重要的信息。

That is to say, the inventor will no longer have to “acknowledge” any specific duty, although that duty remains in existence. 发明人不再须要承认任何特殊的职责,虽然职责仍然存在。

We strongly recommend that any forms give to an inventor or applicant to sign contains a note setting out the language of 37 CFR 1.63(c) so that there can be no dispute later as to whether the person signing knew of this requirement.

我们强烈建议,给发明人或申请人签名的任何表格,也应包含一张便条,列明37 CFR1.63(C),以防止在签字人是否知道这些要求的问题上发生纠纷。

The PTO has published suitable forms, but without our recommended note 美国专利商标局已经公布了适合的表格形式,但不包含我们推荐的形式。 (when ADS used)

使用本表格,如果使用“申请数据表” (without ADS)


Note: an application data sheet (ADS) is now to be required in almost all applications except those made by inventors without any type of priority claim 现在,几乎所有的申请都必须有“申请数据表”,除了发明者递交的没有要求任何优先权的申请。

In response to an FAQ on its web-site, the PTO has indicated that the new forms should be used because they specifically include required language: (1) a statement that “the application was made or authorized to be made by the affiant or declarant,” and (2) the acknowledgement of penalties clause must refer to “imprisonment of not more than 5 years.”


There will be no need to file the inventor’s oath and declaration until the application is otherwise in condition for allowance. However 37 CFR 1.16(f) imposes a surcharge whenever the documents are filed later than the filing date of the application.

发明人的“宣誓及声明”可以到申请被批准前再提交。 然而,37 CFR1.16(f)规定,如果文件在递交申请后提交的,将会有附加费.

If the application is in condition for allowance but the oath/declaration (or substitute statement) has not been filed yet, issuance will be delayed because the PTO will mail out a Notice of Allowability, but not a Notice of Allowance. The Notice of Allowability will set a 3 month period to comply, which is not extendible.

如果申请已经可以被批准,但宣誓/声明(或替代声明)尚未提交, 专利颁发将被推迟,因为美国专利商标局会发出允许性通知书,,而不是批准通知书。在接到允许性通知后,你必须于三个月内提交宣誓/声明(或替代声明)Ӎ 这个期限不得延长.

Assignment may serve as oath 转让书可以作为宣誓

The assignment may also serve as the oath or declaration if the required language is included.


New Rule 3.31 provides that if this is done, the assignment cover sheet “must contain a conspicuous indication of an intent to utilize the assignment as the required oath or declaration under § 1.63.


Priority Claims have to be set out in an application data sheet. (37 CFR 1.55(a)(1)) 优先权的要求必须在申请数据表中注明。

Under revised 37 CFR 1.63, it will no longer be necessary to state foreign priority claims on the oath or declaration.

根据修订后的37 CFR1.63,将不再要求必须在宣誓或声明中注明外国优先权的要求。

New 37 CFR 1.55(d) will come into effect on September 16, 2012 ahead of the other first inventor to file rules and will require that claims to foreign priority on non-PCT applications must be made within four months of the U.S. filing date or sixteen months from the priority claimed, whichever is the later, subject to the possibility of filing a petition later if the claim to priority was unintentionally delayed.

新的37 CFR1.55(d)于2012年9月16日生效,规定对非“专利合作条约”(“非PCT”)的申请的外国优先权的要求,必须在美国申请日的4个月内或要求的优先权日的16个月内声明,以较迟者为准。如果此声明被有意延迟,可能会需要递交请愿书。

From March 16, 2013 the priority documents will have to be filed within the same timeframe. 从2013年3月16日起,优先权文件必须在同样的时间范围内递交。

Powers of Attorney (37 CFR 1.32(b)) 授权委任书(37 CFR 1.32(b))

Must: 必须:

(1) Be in writing; 赋予书面说明。

(2) name one or more representatives in compliance with § 1.32(c); 根据1.32(c),指定一个或多个代表

(3) give the representative power to act on behalf of the principal; and 给予代表权力,使他可以代表主要人行动; 和

(4) be signed by the applicant for patent (§ 1.42) or the patent owner. 由专利申请人或专利所有者签名

The PTO does not recommend use of a combined declaration and power of attorney document, and no longer provides a combined declaration and power of attorney form on its Internet Web site.


The power should be from the assignee where one exists. Otherwise, if the assignee is paying the bill, powers from inventors raise an issue as to who is the client.


Application Data Sheet (37 CFR 1.76) now requires

现在“申请数据表” 需要:

(1) Inventor information including the legal name, residence, and mailing address of the inventor or each joint inventor. 发明者的法定姓名,住所和邮件地址

(2) Correspondence information. 通讯信息

(3) Application information. 申请信息

(4) Representative information. 代表信息

(5) Domestic priority benefit information. Providing this information in the application data sheet constitutes the specific reference required by 35 U.S.C. 119(e) or 120. 国内优先受益的信息

(6) Foreign priority information. 国外优先权信息

(7) Applicant information: This information includes the name (either natural person or juristic entity) and address of the legal representative, assignee, person to whom the inventor is under an obligation to assign the invention, or person who otherwise shows sufficient proprietary interest in the matter who is the applicant . 37 CFR 1.46 requires an ADS whenever the applicant is not the inventor. 申请人信息:此信息包括法定代表人,受让人,受益人的名称和地址。 当申请人不是发明人时,申请信息表是必须的。

Substitute Statement 替代声明

A substitute statement for a declaration or oath will be permitted if the inventor is dead, cannot be found or refuses to sign. (37 CFR 1.64)


The PTO has published a suitable Substitute Statement In Lieu Of An Oath Or Declaration For Utility Or Design Patent Application (35 U.S.C. 115(d) And 37 CFR 1.64).


Corrections of Inventorship 发明人更正

As part of the effort to remove subjective elements from the law, Sections 20(a) and 20(f) of the AIA amend 35 USC 116 and 35 USC 256 relating to correction of the names of inventors in patent applications and granted patents by removing the requirement that in order for correction to be permitted, the error must have occurred without deceptive intent.


New 35 USC 115(h) provides that correction of inventorship information may be made at any time and that a patent shall not be invalid or unenforceable for failure to comply with these requirements as long as a correction is made.


New 37 CFR 1.48 provides that no supplemental oath declaration is to be required of an inventor to make a correction if he/she has already made such an oath or declaration in the proceedings. Once an ADS has been filed naming the inventor or inventors, correction will simply require a new ADS, a new oath or declaration by any “actual inventor who has not yet executed such an oath or declaration”

如果发明人已经递交了宣誓或声明,当其作修正时,不再需要提交补充宣誓或声明。包含有发明人姓名的申请数据表提交后,如果要纠正发明人身份,只需要提交新的申请数据表 (“ADS”)和新的未提交宣誓或声明的发明人的宣誓或声明。

The PTO “may require such other information as may be deemed appropriate under the particular circumstances” surrounding the correction of inventorship.


The PTO’s comments indicate that because knowing who the inventors are will be important for determining whether a particular disclosure is prior art, it will propose a new rule requiring additional fees if inventorship is corrected after the first office action on the merits.

因为知道谁是发明人对决定现存技术很重要, 美国专利商标局将颁布新规则,在第一个审查意见后修正发明人时,收取额外的费用。

Continuations, Continuations-in-Part and Divisional Applications 延续,部分延续和分案申请

New documents signed by an inventor will be required from any additional inventor who has not made an oath or declaration on the parent application. Otherwise no additional forms are required from the inventors, although the PTO has the right to require that copies of an oath or declaration filed in the parent application is supplied for the file of the continuation, continuation in part or divisional application.

如果额外的发明者并没有在母申请中作出宣誓或声明的,那么发明人必须签署新的文档。否则,不需要额外的表格。 但是美国专利商标局有权要求递交母申请的宣誓或声明的复印件。

Prior Art etc. Submissions (Sections 6(g) and 8) – 现有技术的提交

Prior to grant 授予之前

Third parties will be able to submit prior art in the form of patents, published applications and printed publications up to the earlier of allowance and the later of six months from publication and the first official action on the merits.

第三方将可以提交专利,出版了的专利申请,和印刷出版物为现有技术, 直至批准,或出版后的6个月和第一次正式审查意见的较晚者,以较早者为准。

Unlike the previous rule, a concise description of the asserted relevance of each document on the document list will be required, although this will not be permitted to be argumentative. If one wishes to argue, a protest is required, but this can only be filed before the USPTO’s publication of the application.


The new provision should be more useful than the old in enabling third parties to draw the examiner’s attention to relevant art before examination begins. However, it will still be up to the examiner to decide how to use the information.

新条例比旧条例更有用,因为在新条例下,第三方可以在审查开始前引起审查员对相关技术的注意。 然而,依然由审查员决定如何使用这些信息。

The fee is $180 for each group or part group of ten documents. However, this fee is waived if it is certified that it is the first submission of prior art by a particular party or its privies against a particular application and no more than three references are cited.

每组10个文档的费用是180美元. 然而,如果是由某一特定当事人首次提交现有技术, 而且只有3个或更少的引用文件,无须缴纳此费用。

Post Grant 授权后:

Information that may be placed on record in the PTO is amended to include written statements made by the patent owner in federal court or PTO proceedings as to the position taken by the patent owner as to the meaning of one or more claims.


Submissions must include an explanation of their pertinence and, if made by a patent owner, may include an explanation of how the claims differ from the newly-cited art.


Such statements will be able to be used only for purposes of claim interpretation in re-examination proceedings, inter partes review or post grant review proceedings.

这些陈述只能够在复审程序,相关方的覆核,或授权后的复审程序中, 用于对权利要求的诠释。

Post-Grant Proceedings – 授权后的复审程序

One of the main changes of the new law was to change the law relating to administrative proceedings in the USPTO in which the validity of a patent can be considered after grant. Under the new law, the following are possible:

新法主要的改变之一是改变了在美国专利商标局考察已授权的专利的有效性的行政程序。 在新法下,以下这些是可能的程序:

• Ex parte re-examination 单方复审
• Post-grant review 授权后的复审
• Inter partes review 相关方复查
• Special review for business method patents 商业方法的特殊审查
• Supplemental examination, possibly followed by ex parte re-examination 补充审查,之后可能还有单方复审
Ex parte re-examination 单方复审

Ex parte re-examination remains substantially unchanged except that the USPTO Director can institute re-examination on his own initiative on the basis of prior art cited during another re-examination proceeding.


Fee increase from $2,520 to $17,750, of which $13,430 will be refunded if no re-examination is ordered because no substantial new question of patentability is raised.


37 CFR 1.510(b) now requires a “detailed explanation of the pertinency and manner of applying the cited prior art to every claim for which re-examination is requested.”

37CFR 1.510(b) 当前要求详尽解释引用文件应用于复审涉及的权利要求的针对性和方式。

37 CFR 5.510(b)(6) requires that any third party requester seeking ex parte re-examination must certify that he or she is not estopped from making such request. Contrary to the proposed rule, however, there is no obligation on a third party requester for ex parte re-examination to identify him- or herself.

37CFR 5.510(b)(6) 要求任何寻求单方复审的第三方必须证明他/她的该行为不被受阻。然而,与拟议的规则相反,寻求单方复审的第三方没有义务揭露自己的身份。

In determining whether any substantial new question of patentability has been raised in a request for ex parte re-examination, the examiner should ignore any statement that has been filed showing how the claim has been interpreted in other proceedings and use the broadest reasonable interpretation of the claim.


However if re-examination is ordered any such statements that have been filed under 37 CFR 1.501 relating to how the claims should be interpreted should be considered.

然而,如果已决定要复审,根据37 CFR1.501提交的有关应如何解释权利要求的陈述,应给予考虑。

Post grant review and inter partes review – main differences 获授权后的复审及相关方的复审 – 主要区别

When the review may be requested: 何时可能会要求审查:

Inter partes review: After nine months from the grant or reissue, or after termination of post-grant review. (New 35 USC 311(c)).

相关方复查:授权或补发的九个月之后,或在获权后的复审被终止之后。(新35USC 311(c))

Post grant review Only within nine months from the grant of a patent or its reissue. (New 35 USC 321(c)).

授权后的审查:只有在专利的授权或补发的九个月内(新35USC 321(c))。

Patents that can be challenged 可能引发质疑的专利 Inter partes review: subject to possible “graduated implementation” applies to “any patent issued before, on or after March 16, 2013.


Post grant review 授权后的复查:

only patents that contain or at any time contained a claim having an effective date on or after March 16, 2013.


Grounds for challenging the patent at issue 挑战专利的理由: Inter partes review 相关方的复查:

Limited to novelty and obviousness over prior patents and publications. (New 35 USC 311(b)).


Post grant review 授权后的复查:

Any ground of invalidity that can be raised as a defense in an infringement action. (New 35 USC 321(b)).


Threshold that must be satisfied before review can be commenced:


Inter partes review 相关方的复查:

That there is a reasonable likelihood that petitioner will prevail on at least one claim. (New 35 USC 314(a)).


Post grant review 授权后的复查:

Whether it is more likely than not that at least one of the claims challenged is unpatentable or the petition raises a novel or unsettled legal question that is important to other patents or patent applications. (New 35 USC 324(a)).


Permitted Discovery 被允许的法律发现 Inter partes Review 相关方的复查: limited to — 仅限于—

(A) the deposition of witnesses submitting affidavits or declarations; and (B) what is otherwise necessary in the interest of justice.

呈交宣誓证词或声明的证人的盘问; 和 (B) 其他有利于司法公正的情况

Post Grant Review 授权后的复查:

limited to evidence directly related to factual assertions advanced by either party in the proceeding.


Fees 收费 Inter partes review相关方的复查:

$27,200 for the first 20 claims challenged, $600 for each additional claim challenged.


Post grant review授权后的复查:

$35,800 for the first 20 claims challenged, $800 for each additional claim challenged.


Features common to inter partes review and post grant review 相关方复查和授权后复查的常见特性

1. Carried out by the new Patent Trial and Appeal Board; subject to similar procedural rules except where differences are mandated by the differences in statutory provisions.

由新的专利审判及上诉委员会处理; 须遵循类似的程序性规则,除非有法定条文规定的差异。

2. No presumption of validity – decided on the preponderance of the evidence.

不得预先假设有效 –由证据优势决定

This may be important because recent case law in the Federal Circuit has emphasized that invalidation of a patent in court proceedings requires clear and convincing evidence. The lower standard in inter partes review and post grant review provides a strong incentive to challengers to use these proceedings rather than court proceedings to challenge the validity of a patent claim.


3. Claims to be given their broadest reasonable interpretation. The PTO takes the view that use of this standard rather than that used in court is appropriate because the patent owner can amend to clarify the meaning if necessary.


4. Petitions requesting initiation of both types of review shall explain basis for review and set out real party in interest and their privies. Petitions shall be publicly available as soon as practicable. 要求开始这两种复查的呈请必须解释复查的理由,并列出真正的利害人及其关系人。请愿书应在切实可行的情况下尽快对外公布。

5. Review may not be instituted if petitioner has previously filed a civil action challenging the validity of the patent. On the other hand, a declaratory judgment action can be filed after the post-grant review or inter partes review petition has been filed, but such action will be stayed unless the patent owner counter-sues for infringement.


6. A party that has challenged a patent in either type of review will be estopped from raising any issue that it raised or reasonably could have raised in such review in any subsequent proceedings in the USPTO, a district court or the ITC. This is the big disincentive to instituting post grant review or inter partes review and needs to be balanced against the lower standard of proof needed to succeed in these proceedings.


7. At any time before the board’s decision, the parties may settle. However, they must file full details of the settlement which will be available to “government agencies on written request or any person showing good cause.” Otherwise can be kept from public view.


8. Decisions of the Board are to be appealable to the Court of Appeals for the Federal Circuit by either party.


9. Settlement agreements will have no estoppel effect.


Normal Sequence of Events in Both Types of Proceeding – 正常申请程序

1. Petition filed; 递交请愿书 2. Patent owner files preliminary response; 专利所有者初步响应 3. Decision by PTO as to whether the threshold requirement for instituting the relevant proceedings has been met as discussed below and if it has, institute proceedings and issue of a scheduling order; 美国专利商标局决定您是否满足开始进行相关程序的门槛要求,如果已经满足, 即开始进行此程序,并发布日程安排 4. Conference call to discuss possible motions and whether changes needed to scheduling order; 开电话会议讨论可能的的法律动议,和是否有需要改变日程安排 5. Patent owner conducts discovery; 专利拥有者进行法定发现 6. Patent owner files response and possible claim amendments; 专利所有者提交响应和的可能的权利要求的修改 7. Petitioner conducts discovery; 呈请人进行法定发现 8. Petitioner files response and possible opposition to any proposed claim amendments; 呈请人提交响应,并反对任何拟议的权利要求的修正 9. Patent owner conduct rebuttal discovery; 专利所有者进行的反驳发现 10. Patent owner responds to opposition to amendments; 专利所有者响应对修改的反对 11. Hearing date set; 确定审听日 12. Period for observations and motions to exclude evidence; 观测和排除证据的动议 13. Hearing; 审听 14. Decision. 裁决。

Routine Discovery for Both Proceedings 两种程序的例行发现

Routine discovery includes production of any exhibit cited in a paper or testimony, cross examination of persons who have made affidavits or declarations on behalf of the other party and relevant information that is inconsistent with a position advanced during the proceeding. All documents submitted should be in English or translated into English. Note: Rule 37 CFR 42.61(c) provides that data set out in a patent specification will only be accepted as true if supported by an affidavit from a person having first hand knowledge of how the data were derived, which will then expose the maker of that affidavit to cross examination.

例行发现: 书面或证词中提到的任何证物的产生; 对代表另一方当事人作出宣誓证词或声明的人士的交叉盘问; 和在诉讼程序中提出的立场不一致的相关信息. 提交的所有文件应是英文或翻译成英文.

注:37 CFR42.61(c)条例规定: 在专利说明书中的数据只有得到对此数据来源有直接认识的人的宣誓证词的支持,该数据才会被认为是真实的. 宣誓者将受交叉询问.

Additional discovery 其它发现 For Inter partes review (为相关方的复查): permitted only in the interest of justice. 只在有利于司法公正的情况下被允许

For post grant review (为授权后的复查): must relate to facts of the case as noted above and will be permitted only for good cause. 它必须与案件的事实有关,将只被允许用于正当理由

Patent owners may file a response arguing that there should be no review. In post grant review, this can be waived. No amendment is permitted at this stage. Filing of new testamentary evidence will be permitted only very rarely, for example if there is a question of whether the challenger has standing to bring the proceedings.

专利拥有人可以提交答辩, 为阻止复查进行争辩. 在授权后的复查中,这可以豁免。在这个阶段, 不允许任何修改。只有很少的情况允许提交新的遗嘱性质证据,比如,在如果有关于挑战者是否有挑战资格的问题的时候.

Amendment of Claims 对权利要求的修改

Amendments will be permitted only to cancel a challenged claim or to replace a challenged claim with a reasonable number of substitute claims. Normally there will be only one opportunity to amend. The PTO has indicated that normally it will take the view that claim substitution should be on a one for one basis. The “scope of the claims” may not be “enlarged.”

修改只限于取消被挑战的权利要求, 或将一个被挑战的权利要求更换为合理数量的替换权利要求. 通常情况下,将只有一个机会修改。权利要求替换应该根据具体情况. 权利要求的范围不能被扩大.

Supplemental Examination (Section 12) 补充审查(第12章)

A patent owner will be able to request supplemental examination of its patent “to consider, reconsider, or correct information believed to be relevant to the patent”. Subject to certain exceptions where litigation has been commenced or is imminent, “a patent shall not be held unenforceable under section 282 on the basis of conduct relating to information that had not been considered, was inadequately considered or was incorrect in a prior examination” if the information is considered in a supplemental examination.

专利所有者可以要求份补充审查其专利, 以”考虑,或重新考虑,或纠正相信相关信息”. 除了在诉讼已经开始或即将开始的情况下, 专利不能因和在先前的审查中未被考虑, 未被充分考虑, 或不正确的信息相关的行为而被判无效–如果此信息在补充审查中被考虑.

Fee of $5,140 for requesting supplemental examination, and $16,120 for re-examination. Both fees must be paid at the time of requesting supplemental examination, but the fee for re-examination will be refunded if no re-examination is ordered.

请求补充审查的费用是5,140美元. 复审费是16,120美元. 2个费用必须在要求补充审查的时候支付, 但是如果没有进行复审, 费用将被退还.

Special Provisions for Business Method Patents (Section 18) 商业方法专利的特别规定 (第 18章)

For a period of eight years, special post grant review provisions apply to business method patents relating to the practice, administration or management of a financial product or service. If a party or his real party in interest has “been sued for infringement of the patent or been charged with infringement under that patent”, it will be possible to request post- grant review irrespective of whether more than nine months has elapsed since grant or reissue

为期八年,特殊的授权后复查条例适用于与金融产品或服务的实践,行政或管理有关的商业方法专利. 如果某一方或其真正的利害人 “被起诉侵权专利或已被控侵权该专利”,它有可能请求授权后的复查,无论是否授权后或补发后已不止9个月.

“Charged with” means having standing to bring a declaratory judgment action. “被控” 意味着有资格提交宣告式判决书.

The provision does not apply if the patent is for a “technological invention”.

本规定不适用 “技术发明” 的专利.

Determination of what is a “technological invention” to be made on a case-by-case basis “whether the claimed subject matter as a whole recites a technological feature that is novel and nonobvious over the prior art; and solves a technical problem using a technical solution.”

什么是“技术发明”要看具体情况: “是否被要求保护的对象从整体上是参照现有技术下新颖,不明显的技术特征, 并利用技术方法解决技术问题.”

Prior Commercial User Rights (Section 5) 商业使用优先权 (第5章)

The “first inventor” defense currently available under 35 USC 273 with respect to business method patents is expanded for patents issued on or after September 16 2011 to a more general prior user right for those who used the “subject matter” on which they are being sued for infringement commercially more than one year prior to the earlier of the effective filing date of the application giving rise to the patent under which they are being sued or the date of first disclosure in a manner that qualifies for an exception from being treated as prior art.

目前2011年9月16日或之后颁发的涉及商业方法的专利,“第一发明人”的抗辩已经扩展到更一般的预先使用者的权利, 针对在有效申请日和被豁免作为现有技术的第一次披露中较早时间的超过一年前使用了所涉专利的题材的人.

Commercial use is deemed to include the period during which an application for marketing approval is pending before a regulatory body for products that are subject to such premarketing review.


Exception to Prior User Right “前用户权限的例外情况”

However, generally the defense is not available if, at the time the invention was made, it was owned or subject to an obligation to assign to an institution of higher education or “a technology transfer organization” acting on behalf of one or more such institutions of higher education. This exception was added as a result of objections by universities that such a prior commercial user right discriminated against them since they could not take advantage of it.

如果发明是高等教育机构或代表此类高等教育机构的“技术转移组织”所拥有的, 此抗辩是不可用的. 这是由于高校因不能利用商业用户权限而进行抗议的结果.

Virtual Marking (Section 16(a)) 虚拟标记 (第 16(a)章)

The marking requirements of 35 USC 287 that preserve one’ rights to damages, will be able to be met by placing information on the patented article that uses the word “patent” or “pat” and directs the public to a free internet site that associates the patented article with the number of the patent.

35 USC287中保全您要求赔偿损害的权利的标记要求,能以在专利产品上使用“patent”或“pat”字样来满足,并引导公众去将专利产品和专利号相联系的免费网站.

Fee Fixing in Future – 收费调整

The PTO will also be able to start immediately on adopting rules to fix its own fees rather than having these fixed by Congress as has been the case up to now.


Such rule-making requires giving notice to the public of proposed fees and allowing public comment on them before they are adopted.


Proposed Rules have indicated substantial increases.


Micro entities – 微实体

A new category of patent applicant: a small entity that has not been named on year have a gross income more than three times the most recently reported median household income and has not assigned rights to an entity having a greater income. Currently the median household income in the United States is about $50,000. Additionally, micro entity status may be claimed where the applicant’s employer (defined as the source of a majority of the applicant’s income) is an institution of higher education or the applicant has assigned or is obliged to “assign, grant or convey a license or other ownership interest in the application in question to an institution of higher education.

微实体资格:年总收入不能超过美国家庭的年收入中位数的3倍, 而且没有转让权利给大公司. 目前美国家庭的年收入中位数为5万美元。 此外,当申请人的雇主是高校, 或申请人已经或有义务转让(使用权)给高校的情况下, 可以申请微实体的状态.

When the new fee structure is adopted, micro entities will pay most fees at a rate of 25% of those paid by a large entity.


Best Mode (Section 15) – 最佳模式(第15章)

Effective September 16, 2011, the law removes failure to disclose the best mode from the list of possible invalidity defenses to an infringement action and from being the basis for a claim being held unenforceable.

未透露最佳模式不再是对侵权诉讼的无效性抗辩, 也不能被用于使权利要求不能被执行. 此项法案已於2011年9月16日生效。

However, 35 USC 112 still requires disclosure of a best mode and the PTO has stated that it will continue to examine for its presence.

然而,35 USC112仍然要求披露最佳方式

More Detailed Information 更多详细信息

More detailed information is available on our web-site at: 参阅更多详细资料,请参照以下链接:

We have established a Linked-In Group in which the changes effected by the new law are explored. Access to the group can be found at:


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