On September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (AIA). The Act represents the most significant change to the U.S. patent system since 1952. For example, the law changes the U.S. patent system from a "first to invent" to a "first inventor to file" system and expands the definition of prior art that is used in determining the patentability of an invention. Its central provisions are effective for patent applications filed on or after March 16, 2013.
Click here to see additional AIA resources available on the web site of the U.S. Patent and Trademark Office at www.uspto.gov.
- May 22, 2012, Federal Circuit Court Reverses District Court Decision in Pre-AIA Severance Case
- May 22, 2012, Provisions of the America Invents Act Tailored To Non-Profits
- December 19, 2012, Final Rules Issued on Micro Entity Status Affecting Institutions of Higher Education
- August 24, 2012, New Rules for Third Party Submissions in Pending Patent Applications
- You can view Dr. Merkel’s commentary at InsideCounsel by clicking on the link below:
- "IP: America Invents Act implementation ends with a bang," InsideCounsel. Nov. 27, 2012.
- You can view Mr. Kriegel’s commentary at InsideCounsel by clicking on the links below:
- "Is the Patent Office trying to price the AIA out of existence? - Drastic fee increases would discourage use of intended improvements to U.S. patent system" InsideCounsel, March 6, 2012.
- "5 considerations when served with a post-grant review petition - Post-grant review under the America Invents Act—a new patent battlefront" InsideCounsel, February 7, 2012.
- "First to File - It's Not Just a Race to the Patent Office - As March 16, 2013 Approaches, The America Invents Act Will Alter Patent Filing Strategies" InsideCounsel, January 10, 2012.
- "We Passed the America Invents Act – What Next? - Five More Tips To Help Companies Prepare For Implementation Of The AIA’s Provisions" InsideCounsel, December 16, 2011.
- "We Passed the America Invents Act - Now What? - Five Tips To Help Companies Prepare For The Impending Implementation Of The AIA’s Provisions" InsideCounsel, November 15, 2011.
- August 3, 2011, Financial Independence For The Patent Office, Robert M. Gerstein, IPLaw360
The Patent Office has provided publications on the many changes made by the AIA. Links to a number of the publications, including the PTO resources, follow:
- See a side-by-side comparison of US Patent Law before and after the AIA
- Changes to Implement the Inventor’s Oath or Declaration Provisions (Effective: September 16, 2012)
- Overview: The AIA permits an assignee to be identified as the Applicant for a US patent application. Previously, an assignee could file the application but only the inventor could be named as the applicant. Additionally, the AIA streamlines the requirements for the inventor’s oath or declaration and allows for a substitute statement in lieu of an oath or declaration in certain circumstances. The PTO revised the rules of practice related to the inventor’s oath or declaration, including reissue oaths or declarations and substitute statements signed by someone other than an inventor, and it provides for assignments containing oath or declaration statements. As a result, there are easier procedures to move forward with a US patent application in the event an inventor refuses to sign a declaration, cannot be found, or is otherwise unable to sign. The PTO also revised and clarified the rules of practice for power of an attorney and prosecution of an application by an assignee.
- Changes to Implement the Supplemental Examination Provisions (Effective: September 16, 2012)
- Overview: The supplemental examination provisions of the AIA permit a patent owner to request supplemental examination of a patent by the PTO to consider, reconsider or correct information believed to be relevant to the patent. These provisions could assist a patent owner in addressing potential challenges to the enforceability of the patent prior to litigation. The PTO also adjusted the fee for filing a request for ex parte reexamination and established a fee for petitions seeking supplemental examination or inter partes review.
- Changes to Implement Inter Partes review Proceedings, Post-Grand Review Proceedings and Transitional Program for covered Business Method Patents (Effective: September 16, 2012)
- Overview: The USPTO established rules of practice to implement the provisions of the AIA that create the new inter partes review proceeding (which replaces inter partes reexaminations), post-grant review proceeding (similar to patent oppositions in other countries, and only available for patents issuing on applications filed on or after March 16, 2013) and transitional post-grant review proceeding for covered business method patents.
- Rules of Practice for Trials before the Patent Trial and Appeal Board and Judicial Review of Patent Trial and Appeal Board Decisions (Effective: September 16, 2012)
- Overview: The USPTO established rules of practice to implement provisions of AIA that provide for trials before the Patent Trial and Appeal Board. It provides a consolidated set of rules in relation to Board trial practice for inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. It also provides a consolidated set of rules to implement the provisions of the AIA related to seeking judicial review of Board decisions.
- Transitional Program for Covered Business Method Patents - Definitions of Covered Business Method Patent and Technological Invention (Effective: September 16, 2012)
- Overview: The USPTO established rules of practice to implement the provisions of the AIA requiring the PTO to issue regulations for determining whether a patent is for a technological invention eligible for a transitional post-grant review proceeding for covered business method patents.
- Office Patent Trial Guide (applies to proceedings commencing on or after September 16, 2012 as well as derivation proceedings commencing on or after March 16, 2013)
- Overview: The AIA established several new proceedings, which will be conducted before the Patent Trial and Appeal Board. These include inter partes review, post-grant review, the transitional program for covered business method patents and derivation proceedings. The PTO provides a guide to advise the public on the general framework of the regulations pertinent to AIA, including the structure and times for taking action in each of the new proceedings.