• America Invents Act
  • September 21, 2011 | Author: Douglas E. Jackson
  • Law Firm: Stites & Harbison, PLLC - Alexandria Office
  • The President has now signed the America Invents Act, probably the most significant reform of the United States patent laws since 1952.  There are many provisions of this act of interest, which provisions take effect at different times.

    Prosecution Provisions

    Briefly, those provisions affecting patent prosecution and which are of primary interest and/or those which will take effect shortly and which should be noted now are set forth below, together with a few of our comments.

    1)  FEES.  A 15% surcharge will apply to general statutory (including filing and issue) fees and maintenance fees.

    Effective Date10 days after enactment (September 26, 2011).

    Comment:  IF you have fees to be paid, or an application to be filed with fees, authorize those fees to be paid before Sept. 26 to avoid the 15% surcharge to be required thereafter.

    2)  FIRST INVENTOR TO FILE.  The US changes (eventually) to a “first inventor to file” system (where the effective filing date determines who has priority to an invention); and thus the US will no longer have the old “first inventor to invent” system (where the date of invention determines who has priority to an invention).

    Effective Date:  18 months after enactment (or March 16, 2013), and this change will apply to applications with an effective date on or after the date of enactment (September 16, 2011).

    Comment:  This would seem to encourage the early filing of provisional applications in order to get the earliest effective filing date.

    3)  MICRO ENTITIES.  A new category of small entity, a “micro entity”, is established and it receives a 75% (rather than 50%) reduction in most fees.  A micro entity is an inventor/applicant (not assignee) who:  (1) qualifies as a small entity; (2) has not been named as an inventor on more than 4 previously filed US patent applications (including US national stage applications); (3) did not have a gross income exceeding 3 times the median US household income for the preceding year (i.e., thus an income lower than about $150,000); and (4) has not assigned, granted, or conveyed, or is not under an obligation by contract or law to assign, grant or convey, a license or ownership interest to an entity having a gross income exceeding 3 times the median US household income for the preceding year.

    Effective Date:  the day of enactment (September 16, 2011).

    Comment:  If you find that an inventor fits this entity status, please let us know at the time of filing or as soon thereafter as practical (and within 3 months from when the larger fee was paid).

    4)  PRIORITIZED EXAMINATION.  Now (again) to be available for a fee of $4800 (or $2400 for a small entity).  The benefit to applicant is that the application should receive a first office action on the merits within one year of filing.

    Effective Date:  10 days after enactment (September 26, 2011).

    Comment:  If you would like more information about this program, please let us know.

    Other Prosecution Provision

    Other provisions affecting patent prosecution and which may be of interest or concern include the following.

    5)  PRIOR ART.  The definitions of prior art under § 102 are changed dramatically.  A new 102(a) will make a variety of things (i.e.: patents, printed publications, public uses, invention being on sale, etc. found in this or other countries) prior art if they predate the patent application effective filing date.  Prior art will not include disclosures made within one year of the filing date if the disclosure came from the inventor(s).

    Effective Date:  18 months after enactment (March 16, 2013), and these changes will apply to applications with an effective date on or after the date of enactment (September 16, 2011).

    Comment:  There will be more statutory bars than before, much like absolute novelty bars found in most countries.  These new standards for prior art may result in a race to disclose first, rather than the anticipated race to file first.

    6)  SUPPLEMENTAL EXAMINATION.  A new post-issuance proceeding in the Patent Office will be available to correct errors or omissions during the prosecution of an application.  Such a proceeding will allow a patentee to present information that was inadequately considered, not considered, or incorrect.

    Effective Date:  one year after enactment (September 16, 2012).

    Comment:  This will provide an avenue to undercut the inequitable conduct defense in litigation, such as where a known reference was overlooked and not submitted to the examiner during prosecution.

    7)  POST GRANT CHALLENGES - Such challenges include a) Inter Partes Review (replaces Inter Partes Reexamination, and it has a new “reasonable likelihood that the requestor would prevail” standard for the review to commence); b) Ex Parte Reexamination (largely as it existed before); and c) a new Post Grant Review (which may be sought on any invalidity ground, but which must be filed within the first nine months after the patent issues or reissues).  The burden of proof for Inter Partes Review and Post Grant Review will be “proving a proposition of unpatentability by a preponderance of the evidence.”

    Effective Date:  the day of enactment (Sept. 16, 2011).

    Comment:  The Post Grant Review is thus similar to an EPO opposition proceeding.

    8)  FILING BY ASSIGNEE.  A company will be permitted to file an application and sign a declaration therefor on behalf of an employee/inventor where the inventor is under an obligation to assign to the company and the inventor has refused to sign the oath or declaration.

    Effective Date:  one year after enactment (September 16, 2012).

    Comment:  This change will make it easier for an assignee to proceed where there is an uncooperative inventor, and it does away with the previous Petition required to do this.

    9)  PRE-ISSUANCE PRIOR ART SUBMISSIONS BY THIRD PARTIES.  Third parties may submit and explain the relevance of any patent, published application, or printed publication in a pending application.  Such submissions must occur before the earlier of:  i) the notice of allowance; or ii) the later of six months after publication of the application or the date of the first substantive rejection.

    Submissions can also be made in an issue patent, including statements made by patentee in litigation, together with an explanation of the relevance of the submission.

    Effective Date:  one year after enactment (September 16, 2012).

    10)  TAX STRATEGIES AS PRIOR ART - Strategies for reducing, avoiding, or deferring tax liability are now insufficient to distinguish pending claims from prior art.  This applies to any tax liability (e.g., Federal, State, Local, or Foreign).

    Effective Date:  the day of enactment (Sept. 16, 2011), and it applies to all pending or filed application and to any patent issued after enactment.

    Comment:  The congressional intent behind this provision is to make tax strategies part of the public domain and hence unpatentable.

    11)  DERIVATION PROCEEDINGS.  Such proceedings will establish the first inventor to file for an invention when that is in controversy, and thus will replace the old Interference Proceedings which established the first inventor to “invent.”

    Effective Date:  18 months after enactment (March 16, 2013), and these changes will apply to applications with an effective date 18 months after enactment.

    Litigation Provisions

    Provisions affecting litigation and which may be of interest or concern include the following.

    12)  BEST MODE.  Violation of the “best mode” disclosure requirement will no longer be a basis for invalidating a patent - but it will still be a requirement for a patent application!

    Effective Date:  the date of enactment (Sept. 16, 2011).

    13)  WILLFUL INFRINGEMENT.  The failure of an accused infringer to obtain an opinion from counsel, or to produce such an opinion during litigation, will not be usable to prove willful infringement or intent to induce infringement.

    Effective Date:  one year after enactment (September 16, 2012), and applies only to patents issued after that date.

    14)  FALSE MARKING.  Virtual marking,(marking the product with “patent” or “pat.” plus an internet address where the patent number is associated with the product) is now allowed.

    Also, false marking lawsuits are only permitted by a “person who has suffered a competitive injury” (rather than any member of the public, which has resulted in a large number of lawsuits).  Further, marking a product with an expired patent number is no longer a “false marking”.

    Effective Date:  the day of enactment (Sept. 16, 2011).

    15)  PRIOR COMMERCIAL USE DEFENSE.  The prior commercial use defense in litigation is broadened to extend to all subject matters.  This “personal” defense to infringement applies where a prior user reduced subject matter to practice and commercially used the subject matter at least one year before the effective filing date of the application for the patent.

    Effective Date:  the day of enactment (Sept. 16, 2011), and it applies to any patent issued on or after enactment.

    16)  DIS-JOINDER OF DEFENDANTS:  This provision is relevant for patent litigation, and it bars a plaintiff from suing multiple defendants in a single lawsuit if the only justification for the joinder is that all defendants are alleged to have infringed the same patent.

    Effective Date:  the day of enactment (Sept. 16, 2011).

    Comment:  The idea behind this provision is to raise the litigation costs of non-practicing entities (NPE, also known as “patent trolls”), who allege that the patent in suit is being infringed by a broad number of different corporate defendants.  With a loss of the economies of having only a single suit for multiple defendants, NPEs should presumably file fewer and more limited lawsuits.