America Invents Act What Does It Mean For Inventors, Applicants And Patentholders

Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * [email protected]

New!

America Invents Act

Sept, 21, 2011

♦What does it mean for

Inventors, Applicants and

Patentholders?

Patents are one of the best ways to protect new products and processes.

For 12 years, I have been helping people with their innovations.


On September 16, 2011, President Obama signed

the America Invents Act (AIA) into law.

Highly controversial among patent practitioners, the

AIA mandates sweeping changes to the patent

system of the United States – changes that patrons

of the Patent and Trademark Office (PTO) should be

familiar with.

Many provisions of AIA do not take effect for a year

or more after this date including those most widely

known:


Many provisions of the AIA do not take effect for at least a

year after this date including those most far-reaching – (1)

procedures for post-grant review proceedings before the

U.S. Patent and Trademark Office (after September 16,

2012) and (2) a change to a first inventor to file system

(after March 16, 2013).

Other provisions, however, take immediate effect as of the

day of signature (September 16, 2011) or as of the day of

enactment (September 26, 2011).

Our summary lists most of the major provisions according

to their effective dates. We have only hit the high points –

the actual text of the AIA runs well over a hundred pages.


Provisions taking effect on September 16, 2011:

AIA creates a new class of Applicant, “micro-entities”, entitled

to a 75% reduction in fees.

To qualify as a micro-entity, an Applicant must (1) meet

requirements of regulations yet-to-be issued by the PTO, (2)

have not been named on more than 4 patent applications, (3)

not have a gross income more than 3x the median household

income for the preceding year, and (4) not have assigned the

application to an entity whose income exceeded that amount.

AIA limits issue of patent claims directed to or encompassing

a human organism for any Application pending on or filed

after September 16, 2011.



AIA expressly excludes tax preparation inventions.

AIA creates an option for “Prioritized Examination” for

payment of a $4800 fee in addition to the usual filing,

search, examination, processing and publication fees,

reducible by 50% for small entities.

AIA mandates that the PTO work with IP law associations

to establish pro bono programs to assist under-resourced

inventors and small businesses.



•A 15% surcharge will be added to statutory patent-related

fees and patent maintenance fees.

Provisions taking effect on November 15, 2011:

•A $400 surcharge will be added to filing fees for Applications

that are not e-filed, reducible by 50% for small entities.

Several other aspects of the law also go into effect

immediately, including preclusion of multiple, unrelated

parties in one patent suit, changes to the standard for

granting reexamination requests, elimination of failure to

disclose the best mode as a defense to infringement, virtual

patent marking, and a requirement of actual injury for false

marking suits.


THE BIGGIES The First Inventor to File System:

Effective 18 months from enactment (March 26, 2013)

Historically, the United States patent system has

been a first-to-invent system, which means that the party

who could prove that he or she was the first to invent was

entitled to the patent, no matter who got to the Patent

Office first to file their application.

The United States has been alone in maintaining the first-

to-invent standard. Virtually all other nations follow a first-

to-file standard. AIA does away with the first-to-invent

standard, adopting the first-to-file standard common in the

rest of the world.


THE BIGGIES The First Inventor to File System:


While the adoption of the first-to-file standard will bring the

US into closer alignment with the rest of the world in

determining priority of invention, the abandonment of the

first-to-invent standard has generated extraordinary

controversy


Post-Grant Review

Under United States law, there has always existed a strong

presumption that an issued patent is valid, and it was an

arduous process to have a Federal Court rule an issued

patent invalid.

For a few years now, there has been a process, called inter

partes (“between parties”, in other words, adversial)

Reexamination.

A barrier to requesting this type of reexamination was that

the requestor had to demonstrate that there existed a

significant new question of patentability for the issued

patent.


Post-Grant Review

AIA creates a new post-grant review procedure for patents

issuing from applications having an effective filing date on

or after March 26, 2013.

The new post-grant procedure provides a nine-month

window for challenging and issued patent on any ground.

In order for Review to be granted, the challenger must show

that it is more likely than not that at least one of the claims

of the challenged patent is unpatentable.

Even after the nine-month window, has passed, the patent

is still subject to inter partes Reexamination on the basis of

patents or printed publications only.


One-year Grace Period:


Most other nations of the world follow a standard

of Absolute Novelty, meaning that an invention, in order to

be patentable, could not have been publicly used or

disclosed or offered for sale in any way prior to filing the

application.

US law has permitted a one-year grace period for such

uses and disclosures.

The grace period is retained but is narrowed significantly to

include only public disclosures by the inventor.


Interference Proceedings

There has been a long-standing provision in US law

for Interferences, a proceeding in which the party bringing the

Interference has the opportunity to prove prior invention.

Because the new law does away with the first-to-invent

standard, the question of priority of invention has been

rendered moot and there is no longer a need for

Interferences.

Under AIA, the Interference is replaced with a Derivation

proceeding for determining whether an inventor of an earlier-

filed application impermissibly derived his invention from an

inventor in a later-filed Application.


New!

America Invents Act

Sept, 21, 2011



Patentholders?


New!

America Invents Act

Sept, 21, 2011



Patentholders?

There is much more to AIA, but these are the high points.

The above writing is informational only and does not constitute legal advice.

Law Office of Christopher Peil 555 Fulton St. #108 San Francisco, California 94102 Land: 415-896-4254 [email protected]

America Invents Act What Does It Mean For Inventors, Applicants And Patentholders

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