Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act - Examination Guidelines (US Patent and Trademark Office Regulation) (PTO) (2018 Edition‪)‬

The Law Library presents the complete text of the Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act - Examination Guidelines (US Patent and Trademark Office Regulation) (PTO) (2018 Edition).
Updated as of May 29, 2018

The United States Patent and Trademark Office (Office) is publishing examination guidelines concerning the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA). The AIA amends the patent laws pertaining to the conditions of patentability to convert the U.S. patent system from a “first to invent” system to a “first inventor to file” system, treats patents and patent application publications as prior art as of their earliest effective U.S., 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. The Office is providing these examination guidelines to Office personnel, and notifying the public of these guidelines, to assist in the implementation of the first inventor to file provisions of the AIA. These examination guidelines also clarify, in response to the public comment, that there is no requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure (e.g., inventor discloses his invention at a trade show and the intervening disclosure is in a peer-reviewed journal). Additionally, there is no requirement that the disclosure by the inventor or a joint inventor be a verbatim or ipsissimis verbis disclosure of an intervening disclosure in order for the exception based on a previous public disclosure of subject matter by the inventor or a joint inventor to apply. These guidelines also clarify that the exception applies to subject matter of the intervening disclosure that is simply a more general description of the subject matter previously publicly disclosed by the inventor or a joint inventor.

This ebook contains:
- The complete text of the Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act - Examination Guidelines (US Patent and Trademark Office Regulation) (PTO) (2018 Edition)
- A dynamic table of content linking to each section
- A table of contents in introduction presenting a general overview of the structure