NSBA Files Comments on Patent Regs, Seeks Input

October 17, 2012

On Friday, Oct. 5, 2012, NSBA filed comments with the U.S. Patent and Trademark Office (USPTO) on its Notice of Proposed Rulemaking (NPRM): Changes To Implement the First Inventor to File Provisions of the Leahy-Smith America Invents Act, which was published in the Federal Register on Thursday, July 26, 2012. Subsequent to NSBA’s filing of comments, the USPTO extended the public comment period for this proposed rule to Nov. 5, 2012.

Having strongly opposed the Leahy-Smith America Invents Act (AIA), NSBA expressed serious concerns with key elements of the proposed rule and related AIA, specifically: the USPTO’s failure to designate this rulemaking as economically significant; and USPTO’s inappropriate certification under the Regulatory Flexibility Act that the proposed rules will not have a significant impact on small business concerns. Furthermore, NSBA expressed concern with the proposal moving forward in the absence of a legislatively required study on the potential effects of the new first to file provisions on small business concerns. That study, which is to be conducted by the U.S. Small Business Administration’s (SBA) Office of Advocacy, is on hold awaiting necessary funding.

By transforming the U.S. patent system from a first-to-invent to a first-to-file system, changing the provisions on post-grant patent challenges, and effectively eliminating the grace period, among other reforms, the AIA hands larger, multinational corporations a significant advantage over small innovators. NSBA believes that this legislation and the implementation of these rules will have a severe and negative impact on America’s entrepreneurs and small-business community, and encourages members to review the proposed rules and either provide us with any comments via info@nsba.biz or submit their own comments directly to USPTO via e-mail at fitf_rules@uspto.gov and fitf_guidance@uspto.gov.

Please click here to view NSBA’s comments.