Examination Guidelines for Implementing the First Inventor To File Provisions of the Leahy-Smith America Invents Act
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.
- Task
- Read the news
- Patent or trademark
- both
- Legacy system
- —
- Current entry point
- www.federalregister.gov/documents/2013/02/14/2013-03450/examination-guidelines-for-implementing-the-first-inventor-to-file-provisions-of-the-leahy-smith (permanent link in the Federal Register, verified 2026-09-30)
- Legacy system and where it moved
- No legacy system name mention in title or summary )
- Fee
- No fee mention in title or summary )
- What you need (account or API key)
- No account or key mention in title or summary )
- Published
- 2013-02-14
- Document type
- Rule
- Source
- USPTO documents published in the Federal Register (Federal Register API)(retrieved 2026-10-06)
Everything in the same category
Read the news (all 1988) · both (all 2333)
Related entry points
- Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act
- Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act
- Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act
- Pilot Program for Extended Time Period To Reply to a Notice To File Missing Parts of Nonprovisional Application
- Changes To Implement the Patent Law Treaty
- Change in Practice Regarding Correction of Foreign Priority Claims
- Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004
- Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004
- Request for Comments and Notice of Roundtable Event on Leveraging Electronic Resources To Retrieve Information From Applicant's Other Applications and Streamline Patent Issuance
- Motion To Amend Practice and Procedures in Trial Proceedings Under the America Invents Act Before the Patent Trial and Appeal Board
- Revisions To Implement the Patent Term Adjustment Provisions of the Leahy-Smith America Invents Act Technical Corrections Act
- Changes To Facilitate Applicant's Authorization of Access to Unpublished U.S. Patent Applications by Foreign Intellectual Property Offices
- Disclaimer Practice in Patents and Patent Applications
- Changes To Implement the Patent Law Treaty
- Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al.
- Changes To Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims