Continuing Implementation of America Invents Act

Posted Thursday, September 13, 2012.

The President signed the Leahy-Smith America Invents Act of 2011 (the “AIA”) on September 16, 2011. The AIA patent reform act is widely billed as the most significant overhaul of the U.S. patent law in sixty years. Some provisions went into effect immediately, but others constitute such major change that they are being transitioned into place gradually. This is not unlike the change in the term for a utility patent instituted in the 1990s, when the length of a patent monopoly changed from 17 years from issuance to 20 years from filing, where some transitional rules needed to be implemented at the USPTO.

The final implementation date for the AIA is 18 months from signing of the bill, or March 16, 2013. That is the date when the “first-to-file” provision begins. An intermediate implementation date for certain rules is coming up in the next couple of days: September 16, 2012.

On that Sunday, for example, we will see the Board of Patent Appeals and Interferences become the Patent Trial and Appeal Board (the “PTAB”). “Interferences” is being dropped from the name, because once we are in a first-to-file regime, there will be no need for an interference proceeding. Currently, in an interference, two inventors come before the board to parry over which was the first to invent. In the first-to-file system, it no longer matters who was the first to invent as whoever was the first to file an application for a patent on a particular invention has priority. Hence, there’s no need for an interference.

The number and type proceedings which may be heard before the PTAB will increase, as a new post-grant review procedure is being instituted. For up to 9 months after issuance of a patent, a third party petitioner may ask the PTAB to invalidate the newly-issued patent on grounds of novelty or obviousness, among others. The petitioner must not have previously filed a lawsuit in any Article III court to petition for post-grant review. A petitioner will be required to submit a fee of $35,800 to the USPTO for the review. That makes it one of the more expensive USPTO fees, but in comparison to the cost of a patent litigation in a U.S. District Court, the post-grant review process may be a less expensive alternative. Any patent issued under the first-to-file rules, with limited exceptions, may be challenged under post-grant review.

Another rule taking effect on 9/16 is a change to the language required by the inventor’s oath and declaration submitted in new patent applications. Regarding this change, the USPTO has written, “An inventor must state in his/her oath/declaration that (i) he/she is an original inventor of the claimed invention; and (ii) he/she authorized the filing of the patent application for the claimed invention. An inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship.” The existing declaration had a penalties clause in which the inventor affirmed knowledge that misleading the USPTO was subject to penalties under law, but the AIA requires that the inventor now acknowledge the possible penalty includes “imprisonment of not more than 5 years.”

Those are some of the more significant changes occurring on September 16, 2012. Much of it constitutes setting the table for March 16, 2013, the date where the biggest change of all – first-to-file – takes effect.

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