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Summary of the America Invents Act

Filing Reforms
  • First Inventor to File - Section 3
    • Under this section, the U.S. transitions from a First to Invent patent system to a system where priority is given to the first inventor to file a patent application.
    • A derivation proceeding is established to replace the interference proceeding currently employed by the USPTO. The purpose is to determine whether a claimed invention in an earlier filed application was derived from the later filed application.
    • Effective Date: March 16, 2013
  • Assignee Filing - Section 4 
    • Under the AIA, the processes of filing and prosecuting a patent application for an assignee of, or a person to whom the inventor is obligated to assign an invention is simpler and more flexible, allowing a substitute statement to be submitted where the inventor is unable or unwilling to sign an inventor’s oath.
    • Effective date: September 16, 2012.
  • Penalty for Paper Filing - Section 10
    • Effective 60 days after enactment, there is a $400 ($200 for small entities) fee for filings made by non-electronic means to incentivize electronic filing.
  • Best Mode Requirement diluted - Section 15
    • Upon enactment of the AIA, a patent may not be cancelled or invalidated based on an applicant’s failure to disclose “the best mode” of carrying out an invention.
  • Human Organism Patents - Section 33
    • The AIA prohibits granting patents for human organisms. This provision does not apply to previously issued patents.

Examination Reforms

  • Definition of Prior Art - Section 3
    • The AIA presents a new definition of "prior art” under Section 102.
    • New Section 102(a)(1) keeps Section 102(b) standards (on sale, used in public, published and patented) and adds “or otherwise available to public.”
    • New Section 102(a)(2) includes an earlier filed application naming another inventor, excluding inventor-derived information or public disclosure, commonly owned patents and applications, and joint research agreements 
  • Inventor Grace Period -  Section 3
    • Under new Section 102(b), publication of a claimed invention by the inventor less than 1 year before the filing of a patent application may not act as prior art
Third Party Reforms
  • Expanded Prior User Rights - Section 5
    • The AIA extends the prior user rights defense to include any process, machine, manufacture or composition of matter. It applies where the use was at least 1 year prior to the patentee's filing date or the date the invention was disclosed to the public for the prior art exception under new Section 102(b).
    • Use by "a nonprofit research laboratory or other nonprofit entity, such as a university or hospital, for which the public is the intended beneficiary," constitutes commercial use for the purpose of this defense.
  • Expanded Inter Partes Review - Section 6
    • Effective Date: September 16, 2012
    • Reform Inter Partes Reexam
      • Any person other than the patent owner may petition the USPTO for inter partes review of a patent requesting  to cancel at least 1 claim as unpatentable under Section 102 or 103 based on patent(s) or printed publication(s). A petition for inter partes review may be filed the later of 9 months after grant or after a post-grant review proceeding has terminated.
      • The USPTO may grant inter partes review of a patent where there is a reasonable liklihood that petitioner would prevail as to at least 1 challenged claim.
      • Inter partes review may not be instituted if the petitioner has filed a civil action challenging the patent’s validity, or if the petition is filed more than 1 year after the petitioner is served with a complaint alleging infringement.
  • New Post-Grant Opposition System - Section 6
    • Effective Date: September 16, 2012
    • Section 6(d) of the AIA establishes a new “all-issues” post-grant review proceeding in which parties may seek cancellation of patents on any validity ground that could be raised under paragraph (2) or (3) of section 282(b). A post-grant review petition must be filed within 9 months after the patent is issued.
    • The USPTO may grant post-grant review of a patent where it is more likely than not that at least 1 claim is unpatentable, or the petition raises a novel or unsettled legal question that is important to other patents or patent applications.
    • Effective date: September 16, 2012, applicable to any patent granted on, before, or after this date.
  • Business Method Patent Opposition - Section 18
    • Effective September 16, 2012, there will be a transitional post-grant review proceeding for reviewing the validity of covered business method patents.
    • Only a person or the person’s real party in interest that has been sued for infringement of the patent may file for the review.
  • Third Party Submissions - Section 8
    • The AIA allows third parties to submit any patent, published application, or publication relevant to examination of a pending patent application with a concise explanation for inclusion in the record.

Additional Key Reforms

  • USPTO Fee Setting - Section 10
    • Granted authority to the Director of the USPTO to set the fees for patent services.
    • Micro entities are now entitled to a reduction in fees by 75%.
  • Priority Examination Fee - Section 11(h)
    • This section set a fee of $4800 for Prioritized examination.
  • 15% Surcharge - Section 13
    • The AIA established a 15% surcharge on certain patent fees effective 10 days after enactment.
  • Supplemental Examination - Section 12
    • A patent owner may request supplemental examination of an issued patent asking the USPTO to “consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish.”
    • A request for supplemental examination may be granted where one or more items of information raises a substantial new question of patentability.  The USPTO has three months from the time of the request to determine whether to grant reexamination of the patent.
    • Effective date: September 16, 2012, applicable to any patent granted on, before, or after this date.
  • USPTO Revenue Diversion - Section 22
    • Any fees collected by the USPTO in excess of the USPTO’s annual appropriations will now be deposited into a Reserve Fund. Such funds may only be used for Office operations.
    • All fees collected related to patent services must be used by the Office for patent related expenses. Fees collected related to trademark services must be used by the Office for trademark related expenses. Fees in excess of annual appropriations are to be deposited in the Fund and accessed only with Congressional approval.

Other Provisions

  • Patents on Tax Strategies - Section 14
    • After the date of enactment of the AIA, “any strategy for reducing, avoiding, or deferring tax liability” is considered insufficient to distinguish a claimed invention from the prior art for purposes of evaluating an invention for novelty and nonobviousness.
  • Virtual Marking and False Marking Limits - Section 16
    • Allows patent owners to identify their products with the web address containing the patent information.
    • Limits false marking lawsuits to those filed by the U.S. government or by a competitor who can prove competitive injury.
    • It is no longer a violation to mark a product with a patent that covered the product, but has since expired.
  • Establishment of Satellite Offices - Sections 23-24
    • The AIA requires the USPTO to establish three or more satellite offices within three years of the date of enactment. 
    • The USPTO opened the first satellite office in Detroit, Michigan as the ‘‘Elijah J. McCoy United States Patent and Trademark Office” on July 13, 2012. 
    • Dallas, TX, Denver, CO, and Silicon Valley, CA have been selected as the locations for the remaining regional satellite offices.
  • Prioritized Examination - Sections 11(h), 25
    • The AIA gives patent applicants the option to request prioritized examination for inventions that are “important to the national economy or national competitiveness.” Congress established 10,000 as the maximum number requests that may be granted per fiscal year, which may be changed by the Director of the USPTO.
  • Creation of Ombudsman - Section 28
    • The AIA requires the USPTO to establish a Patent Ombudsman Program to provide support and services relating to patent filings to small business concerns and independent inventors.
  • Pro Bono Program - Section 32
    • To assist under-resourced inventors and small businesses, the AIA requires the USPTO to assist intellectual property law associations across the country in establishing pro bono programs for patent related services.
  • Studies
    • Congress has mandated several studies on the patent system including:
      • Effects of First-Inventor-To-File on Small Business - Section 3
      • Prior User Rights - Section 3
      • Implementation of the AIA - Section 26
      • International Protection for Small Business - Section 31
      • Genetic Diagnostic Testing - Section 27
      • Patent Litigation - Section 34