Patent Law Articles Kalamazoo Patent Attorney: Summary of the America Invents Act (AIA)
Kalamazoo Patent Attorney: Summary of the America Invents Act (AIA)

Summary of the America Invents Act (AIA)

In order to enhance opportunities for innovation and entrepreneurial investment, and to adjust U.S. patent laws to those of other countries, the America Invents Act (AIA) was signed into law on September 16, 2011 by President Barack Obama.

Effective March 16, 2013, the AIA switches the U.S. patent system from a first-to-invent to a first-inventor-to-file system, and redefines prior art as the state of the art at the time of filing, rendering the date of invention irrelevant. Inventors will still have a grace period of 12 months (as opposed to inventors in other countries) after filing. Inventors who file a later application will be able to contest inventorship on a previously filed application.

The most substantial changes made by the AIA include:

Tax strategy inventions: In order to differentiate a claimed invention from the prior art, "any tax strategy for reducing, avoiding or deferring" any tax under Federal, state or local law "shall be deemed insufficient " regardless whether the strategy is known or unknown.

False marking: This change was added to eliminate false marking law suits with the exception of a competitor who has suffered a competitive injury and files a civil action in a district court of the United States to recover the damages. It is not considered a violation the marking of a product with a patent that covered the product but has expired.

Best mode. Failure to disclose a best mode is no longer a basis for invalidating a patent and it is no longer considered a defense.

Prior user rights defense. If an inventor uses an invention for more than a year before an another inventor files a patent on the same invention,  than the first inventor can continue using the invention only if it is not derived from the second inventor’s invention.

Micro-entity. A small entity that has not filed more than 4 non-provisional patent applications and does not have a previous year gross income exceeding 3 times the national median household income. Micro-entities will get a 75% reduction in the patent fees charged by USPTO.

Those who favor the bill indicate that the new changes to the AIA will create jobs, support invention, modernize the patent system, simplify the application process and  keep US competitive globally by harmonizing its patent law to that of other countries.  

The opponents of the bill consider that the changes made will favor large companies while small entities will be disadvantaged. The first-inventor-to-file system will favor large corporations which already have good internal patent procedures in place, while a small company with limited resources will only file patents that matter after funding is obtained. It will also prevent start-up companies with opportunities for new inventions from being able to commercialize their inventions. Also, patent protection will be weakened which will reduce motivation for new investments and development.

The new act creates two proceedings: an inter partes review and a post-grant review.

Post-Grant Review (PGR) proceedings give an option to challenge a patent in the first year after the patent was granted. This would improve the quality of a patent by allowing a third party input. Post-Grant Review  is only available for patents that have an effective filing date on or after March 16, 2013 and if the third party has not yet initiated an action in District Court. Post-Grant Review proceedings are conducted by patent trial and appeal board instead of the Board of patent appeals and interferences.

Inter partes review (IPR) can be challenged only after the nine month window for PGR has passed and can be granted if the petitioner can prove that at least one of the claims is patentable.

USPTO practice changes:

Fee setting authority: the AIA authorizes the USPTO to set or adjust patent fees. In addition to the existing patent fees, AIA added the “micro-entity” fee structure. These entities will be given a 75% discount of the already set fee for the large entities.

Additional USPTO facilities:  The AIA requires to establish at least 3 regional satellite locations by September 2014, with the first one located in Detroit.

Third party submission of prior art:  One of the new rules implemented under the AIA allows third parties to submit a written material explaining the relevance of the document  to patent examiners no later than 6 months after the date the application was first published.

Supplemental examination: The AIA allows patent owners to request supplemental examination of a patent to “consider, reconsider or correct information believed to be relevant to the patent”. Within three months of the supplemental examination request date, USPTO will conduct supplemental examination and  issue a certificate indicating whether the information raises a substantial new question of patentability (SNQ).If SNQ is found, the Director must order an ex parte reexamination.


Copyright© 2013 Hettinger & Hettinger, P.C. No portion of this document may be reproduced for commercial purposes. We utilize a copyright violation service to identify copyright infringement. If this article appears on another website, we will flag all major search engines and demand that the violating site be de-listed until the infringement ceases.