What Is the America Invents Act of 2011?

The America Invents Act of 2011

On September 8, 2011, the US Senate passed a “Patent Reform” law, The Leahy-Smith America Invents Act of 2011 or AIA/. This brought about a number of significant changes to the patenting process. Below is a summary of aspects of the AIA that are most likely to affect new patent applicants. 

Effective as of September 16, 2011:

• Reexamination Standard – The standard for inter partes reexamination was changed from “substantial new question of patentability” to a “reasonable likelihood that the requester would prevail.”
• Statutory fee amounts – Pre-AIA USPTO fee schedule is encoded into the law. On March 19, 2013, the final fees enacted by the USPTO under its new fee-setting authority in the AUA went into effect.
• Refunds and error in payment – Allows the USPTO to refund excess claims fees for canceled claims or fees paid in error.
• Micro entity discount – For “micro entities” a new 75% discount on some fees will be offered. See our Small and Micro Entity Status page for more information.
• Tax Strategies are within the prior art – Prevents patents on methods of tax reduction, avoidance or deferral. 
• Best Mode – Failing to state the best mode (or the preferred embodiment) on the application is no longer considered grounds for invalidating the patent. You still have to state the best mode in the application in accordance with section 112 of the patent law, but it is not impossible to challenge a patent in court based on failure to state the best mode.
• Human organism prohibition – Forbids patents “directed to or encompassing human organisms”. 
• Virtual Marking – Allows one to mark a product with the address of a website instead of printing the actual patent numbers on the product.
• Marking (qui tam actions) – Prevents anyone except the government from suing a manufacturer who put expired patent numbers on their products.
• Civil action under 35 U.S.C. 145 – One can no longer sue the USPTO to overturn a ruling in an ex parte reexamination in any disagreement with the PTAB.
• Multiple-Defendant Lawsuits – This provision makes it more expensive to sue multiple defendants on a single patent, presumably to discourage "trolls". This will also prevent a patent owner from suing more than one company for infringing the same patent in a single lawsuit. It also prevents a court from consolidating multiple cases because they all involve infringement of the same patent.

 

Effective September 26, 2011

• Prioritized examination and fee (Track 1) – Introduces the “fast track” examination program.
• 15% transition surcharge fees – Adds a 15% surcharge to patent fees. Will expire when the USPTO revises fees. Check the USPTO website for up-to-date fee listings. 

 

Effective November 15, 2011

• Paper Filing Penalty – A $400 penalty is added for paper filings (ie. non-electronic filing).

 

Effective September 16, 2012 

• Oath or Declaration
• Inventors need no longer state their citizenship
• Adds new required wording
• Allows for required statements to be made in the assignment rather than by oath or by declaration.
• Statements for non-signing inventors
• Removal of “lack of deceptive intent" statement in reissue declarations.
• Supplemental oath or declaration in reissues are no longer required

In August 2012, final rules were issued and made the following changes:

 

• Removed the requirement that declarations list all of the inventors, provided that an ADS is filed which lists them
• Removed the requirement that the person signing the declaration state that they have reviewed and understand the application and recognize the duty to disclose relevant material (these things are still required, but need not be stated in the declaration)
• Removed the requirement of a person to acknowledge on the declaration that the stated information is true and that false statements may jeopardize the validity of the patent

 

• Third-Party Preissuance Submissions – The following were added in new Section 122(e):
• Third parties may submit information such as patents, published applications, other publications.
• Submissions must be made either (1) before allowance, or (2) before the later of 6 months after the publication of the application or the first rejection, whichever comes first
• Submissions can be made through EFS-Web, an online system accessible from the USPTO e-filling system
• The following items must be included for a compliant preissuance submission:

a. Form PTO/SB/429, identifying the publications or portions of publication being submitted
b. A description of the relevance of each item on the documented list;
c. A copy of each item on the document list. This excludes U.S patents and U.S patent application publications;
d. An English translation of any foreign language documents on the document list
e. Statements by the submitting party that: (1) The party is not an individual who has a duty to disclose information in the application under § 1.56; and (2) the submission complies with the requirement of 35 U.S.C. 122(e) and § 1.290
f.  A fee of $190 for every ten documents listed or fraction thereof, unless a fee exemption applies. 
g. A third party is exempt from paying a fee for a submission of three or fewer documents if it is the party’s first such submission and the party files a “first and only” statement.

• Post Grant Review (PGR) 
• Patents issued from applications with a priority date after March 15, 2013 are subject to “Post Grant Review”
• Petitioner must prove that at least one claim is “more likely than not” unpatentable.
• The review must be filed before a declaratory judgment action is initiated  to invalidate the patent.
• The review may cover anything which might challenge the validity of a patent claim.

• Inter-Partes Review (IPR)
• Replaces the “inter partes reexamination” process
• The IPR is limited to patents or printed publications.
• An IPR can be requested either:
• nine months from grant of the patent, or
• after a post-grant review (PGR) -  whichever last

• Initiated when a third party files a petition. The owner of the patent then has an opportunity to respond.
• Before the USPTO and the courts, Estoppel standard is “raised or reasonably could have raised”.
• Supplemental Examination
• All patents are subject to a supplemental examination when issued.
• A patent owner may file a Request for Supplemental Examination.
• Must be undertaken within three months.
• Citing art in an issued patent’s file – Section 301 has been expanded to allow written statements by the patent owner to be filed before a Federal court or the Office takes a position on the scope of a patent claim.

• Priority examination for “important technologies” – Allows the Director grant priority examination for “products, processes, or technologies that are important to the national economy or national competitiveness”. 

Effective March 15, 2013

• First Inventor to File – This is most certainly the most important change in the act. The standard for patentability has shifted from "first to invent" to "first inventor to file"

Previously, patents were granted to the first person to have invented a thing. In an “interference” proceeding if there was any conflict between two inventors, whoever could demonstrate that they had been the first inventor would win the claim. That is no longer the case, as now the law specifies the first inventor to file for a patent.

The applicant still has to be an inventor, thereby eliminating the possibility of entities filing for patents over someone else's invention. The patent will go to the inventor with the earliest effective date on their application. The effective date for an application will be its actual filing date or, if the inventor published less than a year prior the filing date, the date of publication.

• Effective Date vs. Filing Date – US patents or US published applications or PCT applications that claimed priority from a foreign application are considered effective from the time of their foreign filing.
• One-year Grace Period – The grace period during which one may apply for a patent after any public publication which discloses it applies only to the inventor’s own publications or to publication by someone who obtained it from the inventor. There is no grace period for publications by others.
• Section 103 Obviousness – Obviousness is now to be evaluated as of the effective filing date, rather than by the time of invention.
• Statutory Invention Registration – This program has been eliminated
• Time to file priority documents –  When the application claims priority from a foreign application, priority documents must be filed within 4 months of the filing date or within 16 months of the priority filing date, whichever is later.

 

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