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

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.

Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net

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
cpeil2@comcast.net

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

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