Quick Reference Guide

The America Invents Act (H.R. 1249)

Daniel J. Sherwinter, Esq. Marsh Fischmann & Breyfogle LLP

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Timeline of AIA Prov

Effective Sept. 16, 2011 Change inter partes reexam standard ( 6) No more tax patents ( 14) or human organism patents ( 33) New rules for thirdparty submissions of prior art in patent applications ( 8); and issued patents ( 6) Best mode no longer grounds for invalidity ( 15) Change to virtual and false marking rules ( 16) Venue change from DDC to EDVA for various suites ( 9)

Effective Sept. 16, 2012

Inventors oath or declaration on (Assignee Filing) ( 4)

Supplemental examination procedure begins ( 12)

Inter partes review procedure begins ( 6)

Post-grant review procedure begins ( 6)

New 102
The following reflects the post-AIA version of 35 U.S.C. 102, effective March 16, 2013:
(a) Prior Art Prior art under (a)(1) if: patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Not prior art under (a)(1) if: (1)(A) disclosure is 1 year or less before effective filing date of claimed invention and made by inventor or one who derived it from inventor; or (1)(B) subject matter disclosed had previously been publicly disclosed by inventor or one who derived it from inventor. Prior art under (a)(2) if: described in an issued patent or published application that names another inventor and has an earlier effective filing date than that of the claimed invention. Not prior art under (a)(2) if: (2)(A) subject matter disclosed was derived from inventor; or (2)(B) subject matter disclosed had, before it was effectively filed under subsection (a)(2), been publicly disclosed by inventor or one who derived it from inventor; or (2)(C) subject matter disclosed and claimed invention, not later than the effective filing date of the claimed invention, were commonly owned or under obligation of common assignment.

(b) Exceptions (Grace Period)

(c) Joint Research Agreements (JRA)

Considered commonly owned under (b)(2)(C) if: made by or on behalf of, 1 or more parties to, or as a result of activities undertaken within the scope of, a JRA in effect on or before the effective filing date of the claimed invention; and the application discloses or is amended to disclose the names of the parties to the JRA. Patents and published applications are effectively filed under (a)(2) as of the earliest of the actual filing date of the patent or application or any right of priority or to an earlier filing date under 119, 120, 121, or 365(a) (c).

(d) Effective filing date

103 Redline
New 35 U.S.C. 103. Conditions for patentability; non-obvious subject matter (a) A patent for a claimed invention may not be obtained, notwithstanding that the claimed though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented claimed invention and the prior art are such that the subject matter claimed invention as a whole would have been obvious at the time the invention was made before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter the claimed invention pertains. Patentability shall not be negatived negated by the manner in which the invention was made. Old subsections (b) and (c) are deleted.

visions
Fee setting authority given to PTO ( 10) Establishment of new micro-entity classification ( 10) Effective March 16, 2013 Effective Sept. 26, 2011 New prioritized examination track (Track 1) begins ( 11) Derivation proceedings ( 3) 15% surcharge on most fees ( 11)

Transitional program for covered business method patents begins ( 18)

First-Inventor-toFile ( 3)

Repeal of Statutory Invention Registration ( 3)

102 Flow Chart

Determine Effective Filing Date of Application Determine Publication or Filing Date of Potential Prior Art

No

Potential Prior Art Before Effective Filing Date?

Yes Yes
Inventors Own Disclosure?

No

Yes

Within One Year?

Yes

Derived From Inventor?

No

No

Not Prior Art

Prior Art

No

Earlier Disclosure by Inventor Within One Year?

Yes

Micro-Entities
The AIA establishes a new category of applicants called micro-entities. See AIA 10. A micro-entity is any applicant that: 1) has not been named on more than four patent applications; 2) did not have a gross income more than three times the median household income for the preceding year; 3) has not assigned the application to an entity whose income exceeded that amount; and 4) meets the requirements of the regulations to be issued by the Director (which havent been issued yet and should include publication and comment period); OR any applicant that is primarily employed by or assigning the application to an institution of higher learning.

Track 1 Expedited Examination

The AIA establishes a new form of expedited examination known as Track 1. See AIA 11(h); 76 FR 59050-55 (9/23/11). For an additional $4,800 fee, applicants can expedite examination of new, non-reissue, non-provisional applications filed under 35 U.S.C. 111(a) on or after 9/26/11 (not available for international applications, design applications, reissue applications, provisional applications, or reexamination proceedings. The Patent Office will try to reach final disposition within 12 months.

New Third-Party Procedures

Third-Party Submissions of Prior Art. See AIA 6(g), 8; new 35 U.S.C. 301, 122(e). For issued patents filed before, on, or after 9/16/12: Any person at any time may cite to the Office in writing prior art patents or printed publications bearing on patentability of a particular patent, or statements of a patent owner taking a position on the scope of a claim made in Federal court or in front of the Patent Office. For patent applications: Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application before receipt of the notice of allowance or the later of six months after publication or receipt of a first office action on the merits. Post Grant Review. See AIA 6(d); new 35 U.S.C. 321 - 329. Within 9 months after grant of a patent, a petitioner can request to cancel at least one claim of a patent as unpatentable under 101, 102, 103, or 112 (except best mode). The threshold question is whether it is more likely than not that the petitioner will prevail on at least one claim challenged or raises a novel or unsettled legal question that is important to other patents or applications. All real parties in interest must be identified, and estoppel can apply for any ground that was raised or reasonably could have been raised. Inter Partes Review. See AIA 6(a); new 35 U.S.C. 311 - 319. At least 9 months after grant of a patent (and after termination of any post-grant review of the patent), a petitioner can request to cancel at least one claim of the patent as unpatentable under 102 or 103 using patents or printed publications. The threshold question is whether there is a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. All real parties in interest must be identified, and estoppel can apply for any ground that was raised or reasonably could have been raised. Transitional Business Method Review. See AIA 18. A party that is sued or charged with infringement of a business method patent can challenge validity of 1 or more claims under 102 or 103 using valid 102(a) art or prior art disclosing the invention more than 1 year prior to the application filing date.

Selected Other Provisions

PROSECUTION CHANGES
Assignee Filing. See AIA 4; amended 35 U.S.C. 118. A party other than the inventor can apply for the patent (without an oath or declaration) if: it is a person to whom the inventor has assigned or is under an obligation to assign the invention or a person who otherwise shows sufficient proprietary interest; AND the inventors oath or declaration (or substitute statement) is provided prior to grant. Subject Matter Restrictions. See AIA 14 and 33. Any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art. Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism. Supplemental Examination. See AIA 12; new 35 U.S.C. 257. A patentee can seek to purge inequitable conduct and avoid certain grounds for unenforceability by submitting at any time any prior art believed to be relevant to the patent. Prior User Rights. See AIA 5; amended 35 U.S.C. 273. A defendant may have an affirmative defense to infringement by demonstrating that it was commercially using the invention claimed in the patent in suit for more than a year prior to the effective filing date of that patent, subject to an explicit exception for patents owned by or assigned to universities or affiliated technology transfer organizations.

LITIGATION CHANGES
Virtual Marking and Limits to False Marking Suits. See AIA 16. Virtual Marking is permitted by reference to an Internet address. Qui tam standing is no longer available for false marking suits, so that only the U.S. government may sue for a statutory civil penalty. Private parties can still sue for compensatory damages, but only with a showing of competitive injury. Venue. See AIA 9. Litigation against the Patent Office will now be in the Eastern District of Virginia. Best Mode. See AIA 15. Best mode is still part of 35 U.S.C. 112, but is no longer valid grounds for invalidity in court. Advice of Counsel. See AIA 17; amended 35 U.S.C. 298. Failure to obtain or present advice of counsel cannot be used as proof of willful infringement or inducement in court. Joinder. See AIA 19; new 35 U.S.C. 299. Joinder can no longer be based solely on allegations that each defendant allegedly infringed the patent or patents in suit. Rather, patent infringement cases can be joined only if the cases are: with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to making, using, importing into the U.S., offering for sale, or selling of accused product or process; and questions of fact common to all defendants will arise in the action.

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