Feb 19, 2013

Important Changes to U.S. Patent Law Under the AIA

The Leahy-Smith America Invents Act (“AIA”) was signed into law on September 16, 2011 by President Obama, ushering in sweeping changes to the United States patent system, including significant changes to the handling of patent application in the United States Patent and Trademark Office (“USPTO”) as well as patent litigation.  While many of the components of the AIA went into effect on the date of signing, arguably the most significant changes will become effective on March 16, 2013, discussed in detail below.

Starting on March 16, 2013, the United States patent system will move from the current first-to-invent system to a first-inventor-to-file system.  By moving to a first-inventor-to-file system, the U.S. moves closer to harmonizing the U.S. patent system with many of the patent systems of the world.  Any patent application that is filed on or after March 16, 2013 will be subject to the rules of the first-inventor-to-file system, as opposed to the current first-to-invent system.

Under the current first-to-invent system, the first inventor is entitled to patent protection against subsequent inventors who have “invented” the same invention, even if the subsequent invention was completely independent from the first.  However, in the new first-inventor-to-file system, the first inventor to file a patent application with the United States Patent and Trademark Office (“USPTO”) is entitled to patent protection, regardless of whether or not another inventor invented the invention first.  As such, the date of actual invention loses its significance.

By switching to a first-inventor-to-file system, the AIA has also eliminated interference proceedings at the USPTO, which are used to determine the first person to actually invent the invention at issue.  In addition, under the current system, issues regarding patentability and derivation of invention could be determined during interference proceedings.  However, the new derivation proceeding before the Patent Trial and Appeals Board (formerly known as the Board of Patent Appeals and Interferences) is only limited to derivation proceedings.  A derivation proceeding focuses solely on whether or not the first-to-file inventor obtained the invention from the challenger and filed the patent application without the permission of the challenger (assuming the challenger is the actual first inventor).

In addition, the AIA greatly amended 35 USC §§ 102 and 103, the sections of the U.S. Code that define prior art, expanding the field of prior art that can be used during the examination of a patent application filed on or after March 16, 2013.  First, as alluded to above, the amendments to § 102 have removed any reference to the actual date of invention and focus only on the effective filing date of the claimed invention.  As such, an inventor no longer has the ability to “swear behind” a disclosure to eliminate it as prior art, even if the inventor actually invented the invention before the prior disclosure occurred.  However, if the prior disclosure can be attributed to the inventor, and the prior disclosure occurred within a year of the filing date of the application, the disclosure is not considered prior art.

Further, under the current system, only certain activities (e.g., public use, offers to sell and sales) that occur within the territorial boundaries of the United States before the filing of an application are considered prior art disclosures.  Amendments to §102 by the AIA remove such territorial limits.  The amendment also uses the catch all phrase “otherwise available to the public” to broaden the realm of prior art.  In addition, the AIA has expanded the amount of published patent applications that can be used as prior art.  Under the new first-inventor-to-file system, a U.S. patent or application publication is considered to be prior art as of the earlier of the U.S., international, or foreign filing date to which the application claims priority.  In contrast, the current first-to-invent system does not extend the effective prior art date of a U.S. patent or application publication to the foreign filing date.

Lastly, the AIA has led to significant changes in the fee structure for the pursuit and maintenance of patents in front of the USPTO.  For example, examination fees have increased significantly for large entities ($250 to $720) and small entities ($125 to $360).  While some costs have come down — for example basic filing fees have decreased for large entities ($390 to $280) and small entities ($195 to $140) — the government filing fee cost of pursuing patents has increased across the board.  Consequently, filings prior to March 16, 2013 will be able to take advantage of the lower fees.

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