|September 14, 2012|
Previously published on September 10, 2012
Significant Changes in Patent Law Under the AIA Become Effective on September 16, 2012
- Patent application procedures
- Procedures for review of issued patents
- Proof of willful infringement
September 16, 2012 marks the one-year anniversary of enactment of the AIA and is the effective date of significant changes in U.S. patent law. Provisions already in effect include elimination of "best mode" of an invention as a defense in an infringement action, modification of patent marking provisions and expansion of prior user rights in an infringement action.
The following summarizes additional provisions of the AIA that will become effective on September 16, 2012. Details of these provisions will be provided in additional alerts from our office in the upcoming weeks.
In addition, the "first-inventor-to-file" provisions of the AIA will come into effect on March 16, 2013.
Provisions of the AIA Effective September 16, 2012
• Patent Applications
• Preissuance Submissions by Third Parties
A third party may submit, for a limited time, patents, published patent applications and non-patent publications for consideration by the Examiner. A concise description of the asserted relevance of each document must be submitted. The third party is not permitted to respond to the Examiner's consideration of such publications.
• Oath or Declaration by the Applicant
Significant changes in the oath or declaration that is filed in a patent application go into effect on September 16, 2012, and new rules promulgated by the United States Patent and Trademark Office (USPTO) soften requirements for the filing of declarations in patent applications. The rules rely heavily on Application Data Sheets for inventor information and changes in inventorship.
• Review of Issued Patents
• Supplemental Examination by the Patent Owner
Under the supplemental examination provisions of the AIA, a patent owner may request supplemental examination of a patent for consideration or reconsideration of up to twelve items of information that are believed to be relevant to the patent. If the information submitted by the patentee raises a substantial new question of patentability, the USPTO will order an ex parte re-examination of the application.
• Post-Grant Review
Under the AIA, third parties have nine months from the date a patent issues to file a post-grant review of the patent with the USPTO. A third party may file a post-grant review for invalidity based on several statutory requirements, including an on-sale bar, indefiniteness, lack of written description, enablement, utility, novelty and obviousness. Other countries such as Europe have similar provisions, known as Opposition Proceedings, that allow for third parties to challenge patents.
• Inter partes Review
Inter partes reexamination filings will cease at the USPTO on September 16, 2012 and will be replaced with inter partes review, which permits third parties to participate in the review of an issued patent. Petitions for inter partes review can be filed nine months after the patent has issued or, if post-grant review of the patent has been granted, after termination of the post-grant review. Unlike post-grant review, the grounds for inter partes review are limited to novelty and obviousness relative to patents and printed publications. Inter partes review expands the scope of inter partes reexamination of patents to cover all patents, not just patents filed on or after November 29, 1999, the date of enactment of the American Inventor's Protection Act of 1999.
• Covered Business Methods Review
The AIA requires that the Director of the USPTO institute a transitional review proceeding for "covered business method patents," which claim a method or an apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service. Petitions for review can be filed by third parties and are limited to challenges to novelty and nonobviousness.
• Advice of Counsel
Failure to obtain the advice of counsel will no longer be available for use as proof of willful infringement in a civil action. Despite this express provision provided by the AIA, opinions of counsel may, depending on the specific circumstances, be beneficial.
Implementation by the USPTO
The USPTO has published final rules and forms in accordance with the AIA that become effective on September 16, 2012. The USPTO regularly updates its AIA website to post information, webinars and educational opportunities for practitioners and applicants to assist in the transition to the new provisions of the statute and the rules that govern the implementation of the statutory provisions.
March 16, 2013More to Come
The final provisions for the AIA will become effective on March 16, 2013 and include derivation proceedings, as well as new standards for novelty and nonobviousness of inventions under the "first-inventor-to-file" system. The USPTO has published proposed rules to govern several of these sections and is seeking public commentary on the proposed rules.
As the USPTO finalizes rules for these provisions, we will continue to keep you informed. Please contact us if you have questions regarding any provisions of the AIA.