Authored by Thomas L. Irving and Ningling Wang
September 16, 2011, marked the first fundamental patent reform in the United States since the 1952 Patent Act. Many significant changes were made in the America Invents Act (“AIA”) that became effective on September 16, 2011. The full text of the AIA can be found at 125 STAT. 284 (PUBLIC LAW 112–29—SEPT. 16, 2011). This article will highlight a few important changes.
II. Important Changes
Pre-AIA, the United States was the only country in the world where the patent was granted to the "first-to-invent." All others grant patents to the "first-to-file." Under the AIA, U.S. patents with claims having an effective filing date on or after March 16, 2013 (18 months after enactment) will be granted to the "first-inventor-to-file." Such patents will be granted to the person who "invents or discovers," and the AIA still provides a one-year grace period exception under certain circumstances.
B. New definition of prior art
New 35 U.S.C. § 102 (and the amendments to §103) basically defines the prior art against such patents. It removes the geographic and language boundaries set forth in the pre-AIA § 102. The prior art basically constitutes both public disclosures and certain patent-filing disclosures of subject matter "effectively filed" prior to the "effective filing date." The change to "effective filing date" means that the window is wider for additional prior art in one respect since the effective filing date is almost always later than the pre‐AIA date of invention, but is obviously narrower in another respect since prior inventions of others under pre‐AIA 35 U.S.C. §§102 (f) and (g) are no longer prior art under AIA. Also, under the AIA, note that §103’s nonobviousness requirement and the "written description" and "enablement" will all be judged as the same date: the effective filing date.
Under new § 102(c), the combination of subject matter disclosed and a claimed invention shall be deemed to have been owned by the same entity if the subject matter disclosed was developed and the claimed invention was made by, or on behalf of, one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention. Under the old law, the relevant date was "at the time the invention was made." The change to "on or before the effective filing date" may allow applicants to proactively take care of potential §§ 102/103 problem before filing. See also § 102(b)(2)(C) for an expanded use of common ownership to be able to overcome certain issues under § 102(a)(2).
New §102(d) eliminates the need to file U.S. provisional applications based on non-U.S. applications because a non-U.S. application can now be "effectively filed" on the date an application was filed anywhere outside the United State or in any language under §119 or § 365.
C. Post-grant proceedings
The AIA introduced new post-grant review (PGR) and inter partes review (IPR) procedures for patents with claims having an effective filing date on or after September 16, 2012. The current inter partes reexamination procedure will be replaced by IPR. Ex parte reexamination will continue to exist unchanged, except appeals will lie with a Patent Trial and Appeal Board, which replaces the old Board of Patent Appeals and Interferences. As of September 16, 2011, the standard for granting an inter partes reexamination request was changed from "significant new question of patentability" to "reasonable likelihood of success" (RLS) to match the standard that will exist for an IPR. The standard for initiating PGR will be "preponderance of evidence," which is probably "more likely than not" and is also probably a lower standard than RLS.
D. Supplemental examination
In an attempt to offer patent owners a means of purging a potential inequitable conduct problem discovered after issuance, the AIA created a procedure whereby a patent owner may request supplemental examination (SE) of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent. The patentee is insulated in subsequent litigation from inequitable conduct based on that information if (1) the patent owner’s request for SE is denied; or (2) the patent owner’s request for SE is granted, a reexamination is declared, and the patent owner establishes patentability of a claim (either in original or amended form) over the information submitted in the request. SE is available to patents issued before, on, or after the effective date of Sept. 16, 2012.
This article highlights only a few of the important changes brought about by the passage of the AIA. For patent practitioners, it is key to remember that patent practice will involve both the old and new laws until at least March 15, 2034! In addition, practitioners will have to keep track of all the various effective dates so as to offer the best counsel possible to clients as they manage their U.S. patent portfolios.