Final Rule on Statute of Limitations From The USPTO.

Among the host of new rules taking effect this weekend, the U.S. Patent and Trademark Office’s final rule regarding the statute of limitations provision of the Leahy-Smith America Invents Act (AIA) for USPTO disciplinary actions took effect on August 30, 2012.

A statute of limitation sets the maximum time after an event that legal proceedings based on that event may be initiated. In other words, the clock starts running for you to file a legal action from the time you either learn about the problem, or in some cases, when the problem began (even if you didn’t know about it).

The AIA requires that disciplinary proceedings before the USPTO be commenced not later than the earlier of either the date that is 10 years after the date on which the misconduct forming the basis of the proceeding occurred, or one year from the date on which the misconduct forming the basis of the proceeding was made known to an officer or employee of the USPTO. Prior to the passage of the AIA, disciplinary actions for violations of the USPTO Code of Professional Responsibility were subject to a five-year statute of limitations.

As detailed in the Final Rules, the USPTO has adopted the following procedural rules:

  • A disciplinary complaint must be filed within one year after the date on which the Office of Enrollment and Discipline (OED) receives a grievance forming the basis of the complaint, and in no event more than ten years after the date on which the misconduct forming the basis for the proceeding occurred;
  • A grievance is defined as a written submission from any source received by the OED Director that presents possible grounds for discipline of a specified practitioner; and
  • The one-year period for filing a complaint may be tolled by written agreement.

The USPTO has indicated that the new time lines may not be set in stone. Rather, it plans to evaluate these procedures in the future to determine their effectiveness.

According to the agency, “If the new one-year time frame proves to be administratively unworkable or impedes the effectiveness of the disciplinary process, the Office may issue a new notice of proposed rulemaking.”

How Can I Help?

If you, or someone you know, has had an issue while trying to file a patent, defend yourself from a patent lawsuit, or help to enforce your patent rights; please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +


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