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America Invents Act

Following is a brief summary of the most important changes to the U.S. patent laws implemented by the Leahy-Smith America Invents Act (AIA).

First-Inventor-to-File (FITF) – Prior to the AIA, the United States had a “first-to-invent” system in which the determination of whether an invention was patentable was dependent upon the state of the art at the time the invention was conceived, rather than the time at which a patent application was filed. The AIA moves the US patent system into harmony with the patent laws of most foreign countries that require applications to be examined against prior art predating the application’s filing date. Under the FITF system, the date of invention is not determinative.

Prior Use Defense – In situations in which a process (or a machine that performs the process) has been in use for more than one year prior to the effective filing date of a patent that covers the process or machine, the AIA provides a fairly broad “prior use” defense. The defense is applicable to situations in which a non-public first user of the process or machine is alleged to have infringed another’s later-filed patent, and the first use cannot be used to invalidate the patent because it was a non-public use. The defense is personal to the first-user entity and may not be assigned. It may be transferred only with a transfer of all of the business associated with the process or machine.

Assignee Applicants – Prior to the AIA, a patent application was filed on behalf of the inventor and the patent issued in the inventor’s name. In some cases, inventors assigned their rights in their patent application to a third party (such as the inventor’s employer), and the third party would direct the prosecution of the application in the USPTO. Under the AIA, if an inventor assigns the patent application to a third party, the inventor can also authorize the third party to direct the prosecution of the application. In these cases, the assignee third party becomes the applicant, and the patent issues in the assignee’s name. The AIA still requires all inventors to be identified in the patent application.

Post-Grant Review – The AIA creates two new proceedings in the USPTO for challenging the validity of issued patents: inter partes review (IPR) and post-grant review (PGR). IPR allows for attacking a patent’s validity based only on prior art. PGR, which must be filed within nine months of the patent’s issuance, allows for invalidity attacks based on any statutory ground.

Supplemental examination: The act provides a procedure for supplemental examination of a patent by the owner. The supplemental examination is not a re-examination. However, if the Patent Office discovers a substantial new question of patentability during a supplemental examination, a re-examination will be ordered using the current re-examination procedure. A supplemental examination can be used to “cure” what might be inequitable conduct in the original prosecution, if the previously unconsidered or incorrect information was considered or corrected in the supplemental examination.

Filing fees: In addition to the existing large entity and small entity patent fees, the act creates a “micro entity” fee structure, which will most commonly be used by independent inventors. A “micro entity” is any small entity that has filed no more than four applications, and has an income that is less than certain specified limits. Micro entities are charged significantly lower fees that are only 25% of the large entity fee (i.e. $250 for filing, examination and search fees).

Other provisions remove the ability to invalidate a claim or patent based on failing to disclose the best mode of carrying out the invention, permit “virtual” marking of a patent number, limit suits based on claims of false patent marking, and codify the principle that failure to obtain, or choosing not to disclose, advice of counsel cannot be used to prove willful infringement.

If you need more information about the AIA, please contact us.


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