On January 14, 2013, President Obama signed into law an update to the Leahy-Smith America Invents Act (AIA). This revision includes some important substantive changes to the AIA, such as eliminating a "dead zone" where issued patents could not be challenged in a post-grant review or inter partes review, modifying the calculation for patent term adjustments, extending the deadline for submission of an oath or declaration, and adding some details to the derivation proceedings. Each aspect of these changes is now in effect.
Elimination of the "Dead Zone" Period
The new law extends post-grant review and inter partes review of patents based on applications filed prior to March 16, 2013. The AIA established some new procedures for review of issued patents, such as post-grant review and inter partes review, but these procedures were only available to patents filed on or after March 16 2013 (i.e., first-to-file patent applications). The inter partes review procedure replaced the inter partes reexamination procedure. Under the AIA as originally enacted, issued patents based on applications filed before March 16, 2013 were not eligible for post-grant review, and third parties could not file for an inter partes review until nine months after the patent issued. Thus, the originally-enacted AIA created a nine-month "dead zone" in post-issuance review where no post-grant or inter partes review options were available to third parties. This revision removes this dead zone and allows third parties to initiate inter partes review any time after the issuance of a patent application filed before March 16, 2013. The new law also eliminates a requirement to wait nine-months from grant to bring a inter partes review of reissue patents.
Clarification of Patent-Term Adjustments
The time period used for determining patent term adjustment (PTA) for national phase applications has been curtailed. The new law calculates the PTA from the filing of the national phase application rather than the filing date of a Patent Cooperation Treaty (PCT) application. Because the USPTO may not be responsible for delays before the national phase filing, the law changes the calculation of delays to include the period beginning from the commencement of the national phase. Also, for the convenience of the USPTO, all PTA calculation appeals must be filed in the U.S. District Court for the Eastern District of Virginia, where the USPTO is located.
Deadline to Submit Oath or Declaration
The new law extends the deadline for an applicant to submit an oath or declaration until the date an issue fee is mailed. Under the originally enacted AIA, the USPTO would not mail a notice of allowance until an inventor's oath or declaration was submitted. The deadline was extended to give the applicant more time to submit the oath or declaration.
Derivative Proceedings
The new law adds some detail regarding derivative proceedings, which are a mechanism available to ensure that a first-to-file applicant is the true inventor. The law specifies that a petition for a derivative proceeding must be filed within one year of the publication of a patent application or the granting a patent, whichever is earlier. Also, the law specifies that the petitioner must set forth a clear basis for finding that another inventor who filed an application before the petitioner derived the invention from the petitioner without authorization. The law further states that a derivative proceeding decision is final and may not be appealed.
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