America Invents Act

Substantive Changes
• Changes from "First to Invent" to "First to File" System
o "Effective Filing Date"
o Eliminates One-year Grace Period for 3rd party disclosures
o Makes changes to prior art
• Provides Derivation Proceedings
• Adds Pre-Grant Submissions
• Expands Post-Grant Proceedings
o Expands on Post-Grant Submissions
o Retains Ex Parte Reexamination
o Eliminates Inter Partes Reexamination, but…
 Adds Post-Grant Patent Review
 Adds Inter Partes Review
• Adds Post-Grant Supplemental Examination
o Provides Patent Owner with an opportunity to "cure" errors in
prosecution

• Eliminates Best Mode Failure as a Defense

 First to File
• "Effective Filing Date"
• One year grace period only good for Inventor's own disclosures
• Broader scope of patent-defeating prior art
• "Swear Behind" (102(a)/102(e)) prior art is no longer available
• Derivation Proceeding- operate only when inventor alleges that the
other applicant derived invention from the inventor
 First to File (cont'd)
• Priority based on effective filing date
o Effective March 16, 2013 (may be a rush to file for choice of
law) and it applies to any patent application that has an
"effective filing date" after the 18 month period.
• The Act omits the 102(g) interference and prior art provisions,
relating to an invention that was previously made in this country by
another inventor who had not abandoned, suppressed, or concealed it
o No more patent interferences
o Derivation proceedings will be available
 102(a) Prior Art
102(a) A person shall be entitled to a patent unless—
(1) the claimed invention was 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; or

(2) the claimed invention was described in a patent issued under

section 151, or in an application for patent published or deemed
published under section 122(b), in which the patent or
application, as the case may be, names another inventor and was
effectively filed before the effective filing date of the claimed
invention.

N.B. Prior art effect of PCT publications limited to publication date

unless corresponding U.S. national stage application publishes or
issues.
 102(a) Prior Art – Exceptions
• Exceptions from Prior Art
o Applicant's own "disclosures" within 1 year before the
"effective filing date" of a U.S. application and the information
derived therefrom.
o Includes Applicant's own publications
o Grace period is expanded in cases claiming foreign priorities
and provisional applications
o Subject matter related to a research agreement.
 Derivation Proceedings
Will replace patent interference
35 U.S.C. § 291
(a) In General – The owner of a patent may have relief by civil action
against the owner of another patent that claims the same invention
and has an earlier effective filing date, if the invention claimed in
such a patent was derived from the inventor of the invention claimed
in the patent owned by the persons seeking relief under this section.
(b) Filing Limitation – An action under this section may be filed only
before the end of the 1-year period beginning on the date of the
issuance of the first patent containing a claim to the allegedly
derived invention and naming an individual alleged to have derived
such invention as the inventor or joint inventor.
 Pre-Grant Third Party Submissions (§ 122(e))

Pre-Grant Submissions (Similar to Third Party Observations)

Effective date: September 16, 2012; applies to any pending patent
application at that time.

• When:
o Must be filed "before the earlier of–"
(A) Date of Notice of Allowance or
(B) the later of
(i) 6 months after publication date or
(ii) date of first Office Action (rejection)
• What: Third Party Submissions
o Citation to Printed publications (patent, non-patent, or
court decision (can likely introduce an argument under §§
101 and 112))
o "Concise" Description of Relevance
 Post-Grant Submissions and Proceedings

Expands Post-Grant Submissions

Retains Ex Parte Reexamination

Eliminates Inter Partes Rexamination, but…

Adds Post-Grant Patent Review
Adds Inter Partes Review

Adds Post-Grant Supplemental Examination

 Post-Grant Submissions
Post-Grant Submissions (§ 301)
• When (September 16, 2012)
o Any time after patent grant
• What
o Information
 Prior Art consisting of patents or printed publications
(same as before) or
 Written Statements made by the patent owner either
before a Federal court or the USPTO related to claim
scope (new)
o Include written explanation that provides reasons why the
Prior Art or Written Statements are relevant
 Post-Grant Proceedings
Request for Ex Parte Reexamination (§ 302)
Effective date: N/A

Who and When: Any person at any time

Scope: §§ 102 and 103

Threshold for Initiation: Substantial New Question of

Patentability
 Post-Grant Proceedings (cont'd)
Post-Grant Review (§ 321) and Inter Partes Review (§ 311)

• Effective Date (September 16, 2012).

• Post-grant review: Applies only to patents having
an effective date on or after 18 months from
enactment.
• Inter partes review: Applies to any patent issuing
before, on, or after that date.
• When
o Post-grant review: petition filed within 9 months
from patent grant date of patent or from grant date
of reissued patent (§ 321(c))
o Inter partes review: petition filed after the later of
either 9 months after patent grant or termination of
a post-grant review (§ 311(c))
 Post-Grant Proceedings (cont'd)

Post-Grant Review (§ 321) and Inter Partes Review (§ 311)

• Scope
o Post-grant review: Can challenge any aspect of
patentability of any claim including §§ 101 and 112
o Inter partes review: Restricted to patents and
printed publications and to issues of novelty and
non-obviousness
• Patent Owner's Right
o Post-grant review: Preliminary Response
o Inter partes review: Preliminary Response
 Post-Grant Proceedings (cont'd)
Post-Grant Review (§ 321) and Inter partes review (§ 311)

• Threshold for Initiation

o Post-grant Review: USPTO must consider petition
information and patent owner's preliminary
response and will initiate post-grant review if it is
more likely than not that at least one claim is
unpatentable. (§ 324(a), i.e., preponderance of
evidence standard).
 Threshold "may also be satisfied by a showing
that the petition raises a novel or unsettled legal
question that is important to other patents or
patent applications." (§ 324(b))
o Inter partes review: Same as above except that the
required showing is a reasonable likelihood that
the petitioner would prevail with respect to at least
1 of the claims challenged in the petition.
(§ 314(a))
 Post-Grant Proceedings (cont'd)

Post-Grant Review (§ 321) and Inter partes review (§ 311)

• Evidentiary Standard
o Post-grant Review: The "petitioner shall have the
burden of proving a proposition of unpatentability
by a preponderance of the evidence." (§ 326(e))
o Inter partes review: Same as above. (§ 316(e))

• Patent Owner's Right to Amend

• Post-grant Review: Right to file motion to amend
the claims, second motion only possible if both
parties agree (§ 326(d))
• Inter partes review: Same as above. (§ 316(d))

● Confidential Settlements are Allowed

● Intervening Rights (§ 252) Apply

 Post-Grant Proceedings (cont'd)

Post-Grant Review (§ 321) and Inter partes review (§ 311)

• Time Limit for Completion

o Post-grant Review: Proceeding should be
completed within 1 year with one 6 month
extension available on a showing of "good cause."
(§ 326(a)(11))
o Inter partes review: Same as above. (§ 316(a)(12))

• Preclusive Effect (Estoppel)

• Post-grant Review: Cannot raise issues before the
USPTO, District Court, or the ITC if the issues
were previously raised or reasonably could have
been raised. (§ 325(e))
• Inter partes review: Same as above. (§ 315(e))
 Post-Grant Proceedings (cont'd)
Post-Grant Review (§ 321) and Inter partes review (§ 311)

• Litigation Limitations
o Post-grant Review: Cannot request review if
previously filed declaratory judgment ("DJ")
action contesting the validity of the patent (§
325(a)(1))
o Inter partes review: Same as above. (§ 315(a)(1))
Except that inter partes review cannot occur after 9
months of the filing of the complaint by the patent
owner against the petitioner. (§ 315(b))
o Post-grant Review: If petitioner files civil action
on or after request for review, then civil action
automatically stayed unless (i) the patent owner
requests to lift the stay, (ii) the patent owner files
its own civil action or files a counterclaim, or (iii)
the petition requests to dismiss civil action.
(§ 325(a))
o Inter partes review: Same as above. (§ 315(a))
 Discovery Issues
(PGR and IPR)
For both types of proceedings, discovery rules will be
promulgated for:
– Setting forth standards and procedures for discovery of
relevant evidence, including that such discovery shall be
limited to:
• PGR: evidence directly related to factual assertions advanced
by either party to the proceeding.
• IPR: the deposition of witnesses submitting affidavits or
declarations; and what is otherwise necessary in the interest of
justice.
– Prescribing sanctions for abuse of discovery, abuse of
process, or any other improper use of the proceeding, such
as to harass or to cause unnecessary delay or an unnecessary
increase in the cost of the proceeding
– Providing for protective orders governing the exchange and
submission of confidential information
18
 Supplemental Examination

Supplemental Examination (§ 257)

Effective Date: September 16, 2012 – applies to any patent issued
before, on, or after that date.

• When
o Post-Grant
• What: Request by Patent Owner Only
o Consider, reconsider, or correct information believed to be
relevant to the patent
o Request must raise substantial new question of
patentability
• Effect: A mechanism for the patent owner to ward off a
potential inequitable conduct defense
 Supplemental Examination (cont'd)
Supplemental Examination (§ 257)
Effective Date: 1 year after enactment date
• Key Provision
• "A patent shall not be held unenforceable on the basis of
conduct relating to information that had not been
considered, was inadequately considered, or was incorrect
in a prior examination of the patent if the information was
considered, reconsidered, or corrected during a
supplemental examination of a patent.
• Exceptions (cannot file request):
• Prior allegations (made in a PIV certification letter)
• Defense raised in a pending litigation unless Supplemental
Examination proceedings concluded prior to the date of
litigation
 Post-Grant Patent Review Procedures
Summary and Timing
Procedure Request Effective Threshold
Date
Ex parte reexam Anyone In effect Substantial new question of
patentability
Inter partes Third party request based on Now – Reasonable likelihood that
reexam patents and printed 9/2012 petitioner would prevail (upon
publications enactment)
Inter partes Third party request based on Beginning Reasonable likelihood that
review patents and printed 9/2012 petitioner would prevail (upon
publications enactment)

Post-grant Third party request based on Beginning More likely than not that at least
review any ground of invalidity that with 1 challenged claim is
could be raised under patents unpatentable
paragraph (2) or (3) of § 282 filed after
(b) or showing a novel or 3/2013
unsettled legal question that
is important to other patents
Supplemental Patent owner 9/2012 Substantial new question of
examination patentability

21
Overview of Available Procedures

D/E

1 2 3 4 5

A* B
C

Relevant Dates Relevant Filings

1: Filing Date
2: Notice of Allowance
3: Patent Grant Date
4: 9 mo f rom Patent Grant Date
5: Patent Expiration Date
A: Third Party Submissions
B: Post-Grant Review
C: Inter partes Review
D: Supplemental Examination (Patent Owner Only)
E: Ex parte Reexamination (Patent Owner or 3rd Party)

*Third Party Submissions may be f iled during prosecution. The date f or submission depends on the f acts.