America Invents Act (AIA)

On September 16, 2011, the Leahy-Smith America Invents Act (AIA) became law and significantly changed the U.S. patent system.  The AIA not only changes the patentability standards for patent applicants, but it also changes the role of the public in the patenting process which previously was very limited.  Below is a brief summary of the changes implemented by the AIA.

First-to-File Patent System

All patent applications that claim any subject matter having an effective filing date on or after March 16, 2013 are subject to the new “first-to-file” provisions apply which give priority to the first applicant and not the first inventor.  For patent applications that claim only subject matter having an effective filing date before March 16, 2013, the prior “first-to-invent” provisions apply giving priority to the first inventor.  We have more information available in our First to File Patent System section.

Micro Entity Status Created

Effective March 19, 2013, a new entity status was created to further reduce government fees: Micro Entity Status.  Micro Entities receive a 75% reduction in government fees which can save thousands of dollars over the life-time of a patent.  Patent applicants can qualify as a Micro Entity based on either income or a relationship to an institute of higher education.  We have more information available in our Micro Entity Status section.

Prior Commercial Use Defense Expanded

For patents granted on or after September 16, 2011, changes made to 35 U.S.C. 273 create an expanded prior commercial use defense.  Basically, an alleged infringer of a patent can claim a “prior use defense” if their commercial use of the patented technology occurred at least one year before the earlier of (1) the effective filing date of the claimed invention, or (2) the date on which the claimed invention was disclosed to the public in a manner that qualified for the exception from prior art.  The person asserting the defense must prove by clear and convincing evidence.

Expedited Examination of U.S. Patent Applications

Effective September 26, 2011, patent applicants can file a patent application and a petition requesting expedited examination of the patent application.  A patent applications that enters the USPTO’s Prioritized Examination Track 1, typically reach a final disposition within 12 months of the filing date of the patent application.

Pre-Issuance Submissions of Prior Art

As of September 16, 2012, any third-party may submit documents to the USPTO that relate to a pending patent application.  A third-party may submit any patent, published patent application or other printed publication of potential relevance to the examination of the patent application as long as the same is submitted before the earlier of (a) the date of a Notice of Allowance or (b) the later of (i) 6 months after the publication date of the application or (ii) the date of the first rejection of any claim by the Examiner.  See 35 U.S.C. 122(e)(1).

Post-Grant Review

Any patent issued from a patent application governed by the new first-to-file provisions will be subject to a post grant review.  For patents issued from a patent application filed before March 16, 2013, a post-grant review may be utilized for a few classes such as business method patents.  To initiate a post-grant review, a third-party must file a request for post-grant review within nine (9) months of the issue date of the patent establishing that (i) at least one claim of the patent is more likely than not to be declared unpatentable or (ii) that the request raises a novel or unsettled legal question that is important to other patents or patent applications.  In essence, post-grant review may be sought on any grounds that may be used to challenge the validity of a patent claim.

Virtual Patent Marking

Effective September 16, 2011, the new 35 U.S.C. 287(a) allows patent owners to effectively mark their products with a single “virtual patent marking” comprised of the word “Patent” (or “Pat.”) together with a URL address accessible to the public that associates the patented article with the number of the patent.  This benefits companies by not having to update molds every time they are granted a patent for a product.  We have more information in our Virtual Patent Marking section. 

Additional Changes by AIA

Below are some additional changes made by the AIA not discussed previously.

  • Filing & Prosecution by Applicant.  Effective September 16, 2012, a patent applicant files a patent application.  The patent applicant may be the inventor(s) or an owner of the patent rights.
  • Inventor Oath/Declaration Timing.  Effective September 16, 2012, the filing of the inventor’s oath or declaration may be delayed until the application is in condition for allowance.
  • Substitute Statement in Lieu of Oath/Declaration.  Effective September 16, 2012, a patent applicant can now file a Substitute Statement in Lieu of an Oath or Declaration (USPTO Form PTO/AIA/02) involving an inventor that refuses to sign or cannot be found.
  • Derivation Proceedings.  Effective March 16, 2013, the derivation provisions of the new 35 U.S.C. 135 take effect relating to disputes between two patent applicants where the second to file applicant claims that the first to file applicant derived the invention from them (applies only to patent applications that claim subject matter with an effective date of March 16, 2013 or later).
  • Inter Partes Review.  Effective September 16, 2012, inter partes reexamination is replaced by inter partes review.
  • Supplemental Examination.  Effective September 16, 2012, patent owners are able to request supplemental examination of any granted patent and possibly protect the patent against inequitable conduct charges.
  • False Marking.  Effective September 16, 2011, qui tam actions for false marking suits were eliminated.
  • Joinder.  Effective September 16, 2011, 35 U.S.C. 299 limits the circumstances where joinder of defendants in a patent infringement case is allowed.
  • Best Mode.  Effective September 16, 2011, failure to disclose the best mode for an invention is no longer a basis for invalidating a patent.
  • Tax Strategies.  Effective September 16, 2011 and applicable to pending patent applications, tax strategies are deemed to be in the prior art and not patentable.
  • Human Organisms.  Effective September 16, 2011 and applicable to pending patent applications, patents will not be granted to claims directed to human organisms.
  • SIR Repealed.  Effective March 16, 2013, the USPTO will no longer accept Statutory Invention Registrations (SIRs).