The United States Patent and Trademark Office (USPTO) published an initial draft of a new set of rules for seeking and granting patent relief on October 9, 2020.
What Will The New Rules Say?
Among other things, the new rules update how to handle the so-called “ineffective assistance of counsel,” or IAC, and change the requirements for an IAC. Additionally, as part of an effort to reduce the USPTO’s burden, the rules change the frequency of inventors’ examinations for utility models and design patents, and increase the period of time that an inventor has to pay continued examination fees after the initial six months. Finally, changes are also being made so that applicants only have to explain their best mode for one of the claimed inventions, and not for all of them.
Who’s Affected By These Rules?
Anyone who files a patent application with the USPTO after October 9, 2020, will be affected by these rules. However, since the majority of patent applications are filed by small businesses, it is estimated that the new rules will only affect a few hundred thousand people annually.
The Impact Of These Changes
The ability of patent applicants to have their patent applied for and granted by the USPTO is greatly influenced by the rules and regulations that the agency enacts. Given that the new rules update several aspects of the patent application process, it is imperative to understand how the changes will impact your particular situation.
Changes To The “Ineffective Assistance Of Counsel” (IAC) Exception
An inventor may apply for, and the USPTO may grant, a stay of enforcement of a civil action against the inventor for failure to disclose the best mode of practicing the invention to the USPTO. This stay of enforcement is usually referred to as a patent attorney’s “ineffective assistance of counsel” exception. One key change that will affect the way that a stay of civil action is applied for and granted is in the definition of “ineffective assistance of counsel.” Prior to the new rules, whether or not to apply for a stay of a civil action was primarily based on whether or not an attorney filed an appearance on behalf of the inventor. However, under the new rules, the question of whether or not to seek a stay of the lawsuit will be based on whether or not the attorney filed an appearance, an answer, or an acceptable application for a patent, or otherwise failed to act in good faith in pursuing the application.
Changes To The Examination Fees For Utility Models And Design Patents
The frequency of examination for utility models and design patents will be adjusted upward in light of the new rules. Prior to the new rules, an application for these types of patents had to be examined within six months of filing, or the examination fees would be due, and not be refunded. The new rules will extend the examination period to 12 months from the date of filing.
Changes To The Payment Of Continued Examination Fees For Utility Models And Design Patents
Under the new rules, the examination fees for utility models and design patents will be due for the entire period that the application is examined – 12 months from the date of filing. The issue of whether or not to continue paying the examination fees is no longer contingent on the inventor’s financial situation. Additionally, prior to the new rules, a patent application had to be continued for six months, at which point the examination fees were due and not refunded. The new rules change this to a year from the date of filing, with the possibility of refunds for particularly lengthy examination periods.
Changes To The Best Mode Of Practice
To obtain a patent for an invention that they have invented, an inventor must also provide information about their best mode of practice. The new rules codify the obligation of an inventor to disclose the best mode of practice for their invention, and provide a mechanism for an inventor to provide the required information to the USPTO. In practice, this means that an inventor either discloses their best mode of practice in the application, or provides an affidavit explaining why it is not disclosed and why it is necessary to withhold information about their best mode of practice. The new rules state that an inventor does not have to provide evidence of their best mode of practice in the same manner as they provide evidence concerning other aspects of their application.
How Will You Be Able To Apply For A Stay Of Civil Proceedings If The New Rules Go Into Effect?
If you are seeking a stay of a civil action against you for patent infringement, you will have to show that the patent in question is invalid or is not infringed by your activities. In light of the changes that the new rules make to the patent application process, this may be more difficult. If you are able to show that the patent is invalid, you may be granted a stay of the proceedings. However, proving that a patent is not infringed can still be accomplished by showing that you are not manufacturing, using, selling, offering for sale, or importing the claimed invention into the United States.