Patent and Trademark Office Agrees to Extend Comment Period for New Regulations

Intellectual Property

Largely at the bequest of the U.S. Small Business Administration, the U.S. Patent and Trademark Office (USPTO) announced that is extending the public comment period for its proposed rules implementing the first-inventor-to-file provisions of the “America Invents Act.” USPTO has reopened the comment period until November 5, 2012. You may submit comments via email to

As noted in my previous discussion on this subject, Congress adopted — the largely European model, but also one adopted in Canada — a first-to-file system to replace the first-to-invent practice of the last 50 years in this country. In a first-to-file system, the grant of a patent for a given invention goes to the first person to file a patent application/specification for protection of that invention, regardless of the date of actual invention and regardless of whether any other person can stake a claim to having first created the invention. Under the first-to-invent system, the first and original inventor of the idea, concept or product was protected against subsequent designers by the age-old legal adage of “first in time, first in right.”

You may obtain a copy of the proposed rules governing the new first-to-file system by clicking on this link: First-Inventor-to-File Proposed Rules (77 Fed. Reg. 43742, July 26, 2012. You may obtain a copy of the proposed examination guidelines by clicking on this link: First-Inventor-to-File Proposed Examination Guidelines (77 Fed. Reg. 43759, July 27, 2012)