On September 16, 2011, President Obama signed the America Invents Act (AIA) in to law. The major thrust behind the Act was to harmonize U.S. patent law with that of other countries, such as Japan and those in the European Union. Prior to the AIA, the last major overall to the patent system occurred in 1952. Thus, the complexity, scope, and speed of technological innovations caused a patent application backlog, which in most cases exceeded two years. After bipartisan review of the current patent system, it became evident that certain changes were necessary to provide sufficient protection to innovators.
The major change in the AIA is the change from the “first-person-to-invent” system to the “first inventor-to-file” system. This feature in particular will harmonize the U.S. patent system with other countries patent systems. As a result, the “grace period” for prior references currently available under 35 U.S.C. 102(b) will be eliminated. This change does allow for an exception. If the disclosure is made one year or less before the effective filing date and disclosure originated from the inventor or joint inventor, then the disclosure is not prior art.
The AIA also made changes to post-grant review procedures. The post-grant review changes allow a third party to petition to cancel a patent claim within nine months after the issuance of the patent or broadening reissue patent. While Ex Parte reexamination will continue with the same threshold, Inter Partes reexamination will be abolished one year after the enactment of the AIA, September 16, 2012. Supplemental examination will allow a patent owner to request that the Patent Office reconsider or correct information relevant to the patent.
The AIA also has a change in fee structure. Inventors and small businesses that qualify as “micro” businesses will receive a 75% reduction in fees. To qualify as a micro entity, an applicant must meet certain household income tests and not have been named as an inventor on more than four previously filed patent applications. Micro entities may also include institutions of higher education and applicants who work for those institutions. The change in fee structure will also allow for expedited examinations. Applicants can speed examination by paying an extra $4,800, provided that the filed application does not have more than four independent claims and 30 total claims. The Patent Office will only initially accept 10,000 priority examination requests a year.
AIA also sought to mitigate the number of false marking claims. According to the Act only the federal government can bring a lawsuit for false marking. In addition, only entities actually harmed by another’s false marking may bring suit for recovery.
America Invents Act also includes revisions to important legal concepts, such as “prior art,” “commercial use,” “best mode”, which will impact interpretations in the provisions of 35 U.S.C. 102. As a practice note, many of these changes are immediate, such as the prioritized examination and false marking provision, while others do not go into effect until March of 2013, such as the first to file provision. Depending on the issue, patent attorneys/agents will need to be knowledgeable in both sets of the code for the foreseeable transition period.
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