What is the difference between pre-AIA and AIA patent ownership rules?

The America Invents Act (AIA) brought significant changes to patent law, including rules regarding patent ownership. The key differences between pre-AIA (before September 16, 2012) and AIA (on or after September 16, 2012) patent ownership rules are:

1. Applicability: Pre-AIA rules apply to applications filed before September 16, 2012, while AIA rules apply to applications filed on or after that date.
2. Juristic Entity Representation: Under AIA rules, juristic entities (e.g., corporations) must be represented by a patent practitioner for most actions. Pre-AIA rules allowed juristic entities to take certain actions without representation.
3. Ownership Establishment: The process for establishing ownership is slightly different, with AIA applications following 37 CFR 3.73 and pre-AIA applications following pre-AIA 37 CFR 3.73(b).
4. Inventor’s Oath or Declaration: AIA introduced changes to the inventor’s oath or declaration requirements, which can affect how assignees interact with the patent application process.

According to MPEP 324: [Editor Note: See MPEP § 325 for establishing the right of assignee to take action in an application filed on or after September 16, 2012.] This indicates that different sections of the MPEP should be consulted depending on the application’s filing date.

For more information on pre-AIA, visit: pre-AIA.

For more information on USPTO procedures, visit: USPTO procedures.