America Invents Act (AIA) and Best Mode Requirement Impact

12 Questions

What is the impact of the AIA's amendment to 35 U.S.C. 282(a)(3) concerning the Best Mode provision?

It does not change current patent examination practices.

When can a claim of a patent no longer be canceled or held invalid based on failure to disclose the Best Mode?

During patent validity or infringement proceedings.

What is the effective date for the Best Mode provision in the AIA?

September 16, 2011

How does the AIA's amendment to citation of patent owner statements affect patent file procedures?

It enables third parties and patent owners to cite statements at any time.

Who is allowed to file a citation of patent owner statements based on the AIA's provisions?

Third parties and the patent owner

In which phase of the patent process can third parties or patent owners cite patent owner statements?

At any stage of the patent application process

When will the Office consider a patent owner claim scope statement?

After reexamination has been ordered

Will the examiner in a reexamination automatically adopt the claim interpretation from the patent owner's written statement?

No, never

Can a deposition transcript filed by an accused infringer in a Federal court proceeding be submitted into the official file of a patent?

No, as it does not qualify as a written statement by the patent owner

In what circumstances can a written statement by the patent owner regarding claim scope be eligible for submission into the official files of related patents?

If it is directed only to one specific patent's claims

What must be included for a patent owner claim scope statement to be entered into the official file of a patent?

An explanation of how the statement applies to at least one claim

What standards are unaffected by claim construction standards for reexamination?

Litigation standards

Study Notes

America Invents Act (AIA) - Best Mode

AIA's amendment to 35 U.S.C. 282(a)(3) does not impact current patent examination practices regarding evaluation of an application for compliance with the best mode requirement of 35 U.S.C. 112.
The failure to disclose the best mode shall no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.
The effective date for the Best Mode provision in the AIA is September 16, 2011.

Citation of Patent Owner Statements in a Patent File

A third party or the patent owner may cite patent owner statements at any time.
The Office will only consider a patent owner claim scope statement after reexamination has been ordered and only to inform the Office's determination of the proper scope and meaning of the claims.
The Office may not consider a patent owner claim scope statement when deciding whether to order or institute an administrative trial proceeding.
The examiner in a reexamination will not necessarily adopt the interpretation of the claims based solely upon a written statement of the patent owner.
A written statement of the patent owner will be weighed with all other relevant information in making an independent determination of the proper claim scope and meaning of the claims by the Office.
A deposition transcript of the patent owner filed by an accused infringer in a Federal court proceeding is not eligible for submission into the official file of a patent.
A written statement by the patent owner regarding the scope of a claim of a particular patent is only eligible for submission into the official files of that patent.
The filing requirements for submitting a patent owner claim scope statement into the official file of a patent include:
- An explanation of the pertinence and manner of applying the written statement to at least one claim of the patent.
- Identification of the forum and proceeding in which the patent owner filed the statement.
- Identification of the specific papers and evidence from the proceeding in which the statement was filed.