The America Invents Act ("Act") was enacted into law on September 16, 2011 and provides sweeping changes to the US patent law. Since its enactment, many questions have been posed regarding the different effective dates of individual provisions within the Act. In an effort to address these questions, we have summarized many of the key provisions within the Act and the corresponding effective dates below.
September 16, 2011:
Sec. 5 - Defense to infringement based on prior commercial use
- Prior commercial use defense is expanded to affiliates and the defense is expanded to all technology areas.
- Applies to any patent issued on or after September 16, 2011.
Sec. 6 – Threshold transition for Inter Partes reexaminations
- New threshold for request for inter partes reexamination to be granted: "a reasonable likelihood that the requester would prevail with respect to at least one of the claims challenged in the request."
- Applies to requests for inter partes reexamination that are filed on or after September 16, 2011 but before September 16, 2012.
Sec. 9 – Change in venue from District of DC to the Eastern District of Virginia
- The Eastern District of Virginia now has jurisdiction over lawsuits where the USPTO is a party and the lawsuit is brought under the following sections: Sections 32, 145, 146, 154(b)(4)(A), and 293 of title 35, United States Code, and section 21(b)(4) of the Trademark Act of 1946.
- Applies to any civil action commenced on or after September 16, 2011.
Sec. 10 - Fee setting authority
- Director has authority to set all USPTO fees.
- Note that according to the USPTO, fee reductions for a "micro-entity" will not go into effect for another 12-18 months because additional time is needed to draft rules.
Sec. 14 - Tax Strategies deemed within the prior art
- Any known or unknown strategy for reducing, avoiding, or deferring tax liability is deemed to be within the prior art for all patent applications and patents.
- Applies to any patent application pending/filed on or after September 16, 2011, and to any patent that is issued on or after September 16, 2011.
Sec. 15 - Best Mode Requirement
- Patent cannot be found invalid or otherwise unenforceable due to non-compliance with best mode requirement.
- Applies to all proceedings commenced on or after September 16, 2011.
Sec. 16 – Virtual marking
- Allows virtual markings (postings on website) to provide public notice that an article is patented.
- Applies to all marking that occurs on or after September 16, 2011.
Sec. 16 - False marking actions
- Prohibits anyone other than US government from bringing suit for false patent marking unless a competitive injury has been suffered by the plaintiff.
- Applies to all cases pending/commenced on or after September 16, 2011.
Sec. 33 - Limitation on issuance of patents
- No patent may issue on a claim directed to a human organism.
- Applies to applications pending on, or filed on or after September 16, 2011.
September 26, 2011
Sec. 11 – 15% surcharge and prioritized examination
- A 15% surcharge will be added to all patent fees.
- Applicants can pay an additional $4,800 ($2,400 for small entity) to file a request for prioritized examination of a nonprovisional application for an original utility or plant patent.
November 15, 2011
Sec. 10 – Additional fee for paper filings
- Applicants will pay an additional $400 ($200 for small entity) for applications that are not electronically filed.
September 16, 2012
Sec. 4 – Oath and declaration
- Applications may be filed in the name of an assignee or a person to whom an inventor has an obligation to assign the invention.
- Applies to any application filed on or after September 16, 2012.
Sec. 6 – Post-grant review
- Within nine months after grant a petitioner may request a post-grant review of a patent based on any patentability issue except best mode.
- Effective September 16, 2012 but applies to patents having an effective filing date on or after March 16, 2003.
Sec. 6 - Inter Partes review
- Following the nine month window for post-grant review, petitioner may request inter partes review, which will replace inter partes reexaminations.
- Applies to any patent issued before, on, or after September 16, 2012.
Sec. 8 - Preissuance submissions
- Third party may submit any publication during prosecution of a patent application to be considered by the Examiner, before the earlier of the (1) date of a notice of allowance or (2) the later of six months after the date of first publication or the date of the first rejection under 35 U.S.C §132.
- Applies to any application filed before, on or after September 16, 2012.
Sec. 12 - Supplemental examination requested by patent owner
- Patent owner may request supplemental examination of a patent. If a substantial new question of patentability is raised, an ex parte reexamination will be ordered.
- Applies to any patent issued before, on or after September 16, 2012.
Sec. 17 - Advice of Counsel
- The failure of an accused infringer to obtain the advice of counsel cannot be used to prove willful infringement or intent to induce infringement.
Sec. 18 - Transitional program for covered business method patents
- Petitioner charged with infringement of a business method patent may seek a post-grant review for reviewing the validity of the business method patents.
- Applies to covered business method patents issued before, on, or after September 16, 2012 with certain exceptions.
March 16, 2013
Sec. 3 – First-inventor-to-file system
- Replacing the "first-to-invent" system with the "first-inventor-to file" system.
- Prior art will encompass any publication (including patents and published patent applications), public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
- A one-year grace period is being provided to file an application after a disclosure of the invention by the inventor or another who obtained the subject matter of the invention from the inventor. For a more detailed discussion regarding the one year grace period, please see our article titled " Patent Law Creates a First-to-Disclose System" published September 27, 2011 in the Daily Journal.
- Applies to any patent application having an effective filing date on or after March 16, 2013.
Sec. 3 – Derivation proceedings
- Derivation proceedings will replace interference proceedings for first-inventor-to-file applications and patents.
- Applies to any patent application having an effective filing date on or after March 16, 2013.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.