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IP Update: New Act Correcting the America Invents Act

January 18, 2013

Related Professionals: Barker, M. Paul , Tridico Ph.D., Anthony C.

IP Update

On January 14, 2013, President Obama signed H.R. 6621 into law. The new “technical corrections” Act was enacted “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act [‘AIA’] and title 35, United States Code.” The new Act not only corrects several minor errors, but also includes a few important changes to the AIA and other provisions of the Patent Act. This update discusses several of those important changes, including provisions that impact the timing of the new inter partes proceedings and modify aspects of patent term adjustment (“PTA”).

The new Act did not include two provisions from the original bill. First, a provision that would have curbed the term of pending pre-GATT patent applications was deleted. Second, the new Act did not repeal 35 U.S.C. § 325(f), which bars post-grant reviews (“PGRs”) for claims in a reissue patent that are identical to or narrower than a claim in the original patent if the PGR request is filed greater than nine months after issuance of the original patent.

Unless otherwise provided, the amendments take effect on the date of enactment of the new Act and apply to proceedings commenced on or after that date.

Eliminating the Inter Partes Proceeding “Dead Zone”

The AIA provides two new inter partes proceedings: PGR and inter partes review (“IPR”). To prevent copending PGR and IPR proceedings, the AIA includes a provision that precludes IPR requests before the expiration of the nine-month post-grant period in which PGR requests are permitted. That provision, however, created a nine-month “dead zone” in which a challenger of a pre-AIA patent cannot file either a PGR request or an IPR request. (A pre-AIA patent is not subject to the “first inventor-to-file” provisions that take effect on March 16, 2013.) In fact, in its original form, the AIA prevented PGR proceedings on pre-AIA patents, yet still required an IPR requester to wait nine months after grant of the pre-AIA patent. Section 1(d) of the new Act eliminates the “dead zone” by providing that the AIA provision setting the waiting period for IPR filing (35 U.S.C. § 311(c)) does not apply to pre-AIA patents.

The new Act also amended 35 U.S.C. § 311(c) so that an IPR requester no longer must wait nine months after the issuance of a reissue of patent to file the IPR request.

Changing Certain Patent Term Adjustment (“PTA”) Provisions

Previously, 35 U.S.C. § 154(b)(1)(B) provided extension of patent term in certain instances for a patent application pending more than three years after “the actual filing date of the application in the United States.” Section 1(h)(1) of the new Act changes that starting date to the actual U.S. filing date for applications filed under 35 U.S.C. § 111(a), or to the commencement of the U.S. national stage under section 371 for international applications.

Section 1(h)(2) of the new Act also changes the timing of the U.S. Patent and Trademark Office’s (“PTO”) transmission of the notice of determination of PTA. Specifically, the PTO will transmit the notice no later than issuance of the patent rather than with the Notice of Allowance.

Finally, under section 1(h)(3) of the new Act, an appeal to the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging an unsatisfactory Director’s decision on a request for reconsideration of PTA. The new Act also moves the period for such an appeal to within 180 days of the Director’s decision rather than 180 days after the grant of the patent. 

Addressing the Effective Date of the AIA Provisions Concerning Advice of Counsel

Under a provision of the AIA, a party’s failure to obtain the advice of counsel regarding alleged patent infringement cannot be used in court to prove willful infringement or intent to induce infringement. 35 U.S.C. § 298. Section 1(a) of the new Act applies that provision to any civil action commenced on or after the date of enactment of the new Act.  

Changing Certain Provisions Directed to Derivation Proceedings and Interferences

Section 1(k) of the new Act changes the time for filing a petition to institute a derivation proceeding and adds a definition of the term “earlier application.” In addition, section 1(k) of the new Act clarifies the PTO’s jurisdiction and appeal process for interferences declared after September 15, 2012. Specifically, such interferences are subject to the pre-AIA provisions of the Patent Act governing the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit, namely, 35 U.S.C. §§ 6 and 141, and 28 U.S.C. § 1295(a)(4)(A).

Changing Certain Provisions Concerning the Applicant

Section 1(f) of the new Act provides that an applicant must comply with the oath or declaration provision of the Patent Act before paying the issue fee rather than conditioning the issuance of a Notice of Allowance on prior compliance, as the AIA originally stated. Section 1(i) of the new Act also repeals section 373 of the Patent Act, which provided that the PTO could not accept an international application designating the United States if it was filed by someone who was not qualified to file a U.S. patent application under section 111, i.e., someone other than an inventor.

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