Highlights of the America Invents Act Signed by the President September 16, 2011

 1. First to File – Under the old patent law, the US was almost the only country where the person entitled to a patent was defined as the first person to invent the subject matter.  Most other countries grant patent rights to the first person to file an application for patent rights.

Under the new patent law, effective March 16, 2013, the rights to patent an invention shift to the person who is first to file an application for the respective subject matter.

 

2. 1-Year Grace Period – Under the old patent law, the inventor had a one year grace period, after the first offer for sale or first public use in the USA, to file his US patent application.  While public use and/or offer for sale under US law often forfeited most foreign rights, there was that 1-year grace period in the US.

Under the new law, effective March 16, 2013, the 1-year grace period still applies, but only to the extent the public use or offer for sale is an action of the inventor, or an action based on information received from the inventor.

In addition, while the old law only applied to acts in the US, under the new patent law, the triggering acts can take place anywhere.

 

3. Prior Use Defense – Under the new law, as of Sep 16, 2012, for the first time, Prior Use of the invention can be an absolute Affirmative Defense against an accusation of infringing a patent.  A qualified Prior Use allows for certain ongoing infringement with impunity.  One of the qualifications is that the prior use must have been started, or substantial preparations made for such prior use more than one year before the effective filing date of the patent application.

 

4. Prioritized Examination – Under the new patent law, effective September 26, 2011, a new procedure is available for expediting examination of an application.  For applications accepted for prioritized examination, the Patent Office promises at least 2 Office Actions (examination reports) from the examiner within 12 months.

This prioritized procedure applies only to newly-filed applications.  However, an existing application can be “newly-filed” as a Continuation application and still take advantage of Prioritized Examination.  The additional fee for entering the prioritized examination procedure is $4800, $2400 for a Small Entity.

 

5. Patent Prosecution Highway – Another way to get accelerated examination is to file the application in a cooperating country, notably Australia, request expedited examination in that country, and then take that allowance to the US Patent Office and ask for the same scope of coverage in the US Patent Office on the basis of the Patent Prosecution Highway.  This procedure is untested, as is the expedited US examination.  However, the PPH appears to offer a reasonable alternative to US Prioritized Examination, and may be less costly.

 

6. Assignee Can File Patent Application – Under the old law, the inventors were all required to sign an application.  If an inventor could not, or would not sign, the procedures for by-passing the inventor were onerous.

Under the new law, effective September 16, 2012, if an inventor is unwilling or unable to sign, the application can be filed in the name of a party (an Assignee) to whom the inventor had an obligation to assign the application.

 

7. Fees – Under the new patent law, effective September 16, 2011, the law allows the US Patent Office substantially more freedom than in the past to set fees; high enough to cover all costs of running the US Patent Office.  Effective September 16, 2011, all fees were raised about 15%.  The small entity discount of 50% off the base fee was retained.  In addition, the law created a “micro-entity” which is to receive a 75% discount.  A micro-entity is defined as a person who qualifies for small entity status, has not been named on more than 4 previous patents, did not have a household income greater than 3 times the median household income, and has no obligation to assign to anyone who does not qualify under the income test.

 

8. Post-Grant Review Procedures – Under the new law, effective September 16, 2011, re-examination procedures are replaced with two new procedures which are available for looking at validity, or other source of concern, regarding a granted patent.

Post-grant review can now be filed by a 3rd party within 9 months after grant of the patent.  This is quite similar to “opposition proceedings” in other countries, specifically the European Patent Office.  The request for such review must raise a legitimate issue regarding validity.  The standard for award of a post-grant decision is “preponderance of the evidence”.

Supplemental examination can be requested by the patent owner for the purpose of curing defects in the patent after the patent is granted.

 

9. The Unknowns – The America Invents Act is a radical change in USA patent law.  Quite a few of the changes are being phased in over time.  Some of them even affect how we view filing and securing patents in other countries.

The procedures for implementing some of the provisions of the new law have not yet been developed.  Those that have been developed are largely untested.  The full scope of the changes is unknown.  Accordingly, the full scope of these changes, and how they will affect any one case, are still being developed and will evolve over time.

Please visit our Idea Protection Blog for periodic up-dates on how this new patent law is affecting the legal landscape in the US and around the world.

 

This document prepared by Attorney Thomas D. Wilhelm, Wilhelm Law, 100 W. Lawrence St., Appleton, WI 54911, www.wilhelmlaw.com.  The information contained herein is intended to inform and not to advise.  The reader is encouraged to seek appropriate specific legal counsel for his/her particular legal matter.

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