Patent Office Practice - America Invents Act
On Friday, September 16, 2011, President Obama signed the America Invents Act at a signing ceremony at Thomas Jefferson High School for Science and Technology in Alexandria, VA. The U.S. Senate voted on September 8, 2011, to reform U.S. patent laws by approving the Leahy-Smith America Invents Act, which had identical provisions to H.R. 1249, which was approved by the House of Representatives on June 23, 2011.
The legislation passed by the House and Senate made significant changes to the U.S. patent system, including conversion to a first-inventor-to-file system, introduction of enhanced post-grant review procedures conducted in the USPTO, and redefinition of the parameters of USPTO funding. The bill also addressed preissuance submissions by third parties; USPTO fee-setting authority; supplemental examination, which appears relevant to the issue of inequitable conduct; reissue, which also appears relevant to the issue of inequitable conduct; micro entity fees; false marking; tax strategy patents; elimination of the best mode defense (although the best mode requirement remains in 35 U.S.C. § 112); special post-grant review for business method patents; USPTO satellite offices; creation of a USPTO ombudsman; residency for Federal Circuit judges; and USPTO authority to prioritize examination.
To date, many provisions have gone into effect following enactment of the legislation with new rules promulgated by the USPTO implementing the legislation. A number of important changes took effect upon enactment. Notably, the threshold for instituting inter partes reexamination will change. The new threshold requires a finding “that there is a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request.” Additionally, the Federal Circuit will serve as the only appeal route from ex parte reexamination decisions. The legislation also included substantial changes to the false marking statute, which will apply to cases pending on the date of enactment, as well as cases filed on or after that date. Upon enactment, all fees increased by 15% 10 days after enactment; the USPTO offers a new micro entity discount (75% discount) for certain fees; and Track I prioritized examination is available for $4,800. Patent challengers who file proceedings on or after the date of enactment may no longer rely on best mode as a defense to infringement. Also, on or after the date of enactment, patent holders may use virtual marking (through a website). When enacted, the legislation also made immediate changes to patent applications directed to tax strategies and human organisms. The legislation also included a change that will apply in certain instances to the method of calculating the due date for a patent term extension application based on FDA approval.
A year after enactment, seven other provisions of the AIA went into effect. Notably, three new administrative trial provisions ─inter partes review, post-grant review, and the transitional program for covered business methods patents─ are available as timely, cost-effective alternatives to district court litigation in order to challenge an issued patent. Supplemental examination provisions now allow applicants to submit relevant information regarding the patentability of an issued patent in order to protect the patent from an inequitable conduct charge. Changes to the inventor’s oath or declaration provisions enable an assignee to file a patent application. The citation of patent owner provision allows for the USPTO to treat the claims in a patent consistent with how a patent owner represents its claims to a court or in other USPTO proceedings. The year anniversary of the AIA also marked the beginning of the Patent Trial and Appeals Board (PTAB), formerly known as the Board of Patent Appeals and Interferences.
On March 16, 2013, the historic shift to a first-inventor-to-file system aligning the U.S. system with international patent system occured. Additional provisions under AIA also took effect on this date, e.g., derivation proceedings and the repeal to the statutory invention registrations.
For the effective date of provisions in the Act, click here.
To view the USPTO webpage dedicated to implementation information, click here.
To read or subscribe to the Finnegan America Invents Act blog, click www.aiablog.com.
Additional background information is available at the links below.