Patent Law: Understanding The Aia's Applicable Laws

The Leahy-Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the U.S. patent system since the Patent Act of 1952 and closely resembles previously proposed legislation in the Senate in its previous session (Patent Reform Act of 2009).

The AIA not only changes the patentability standards for patent applicants but also changes the role of the public in the patenting process, which previously was very limited. The AIA made a number of changes to US patent law that harmonized it with the laws of other nations, such as changing the US law from first to invent to first inventor to file and providing an additional way to challenge an issued patent, and many more.

First-to-File Patent System

The Leahy-Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the U.S. patent system since the Patent Act of 1952. The AIA switches the U.S. patent system from a "first to invent" to a "first inventor to file" system, eliminates interference proceedings, and develops post-grant opposition. Its central provisions went into effect on September 16, 2012, and on March 16, 2013.

First to File and Grace Period

The law switched the U.S. rights to a patent from the previous "first-to-invent" system to a "first inventor-to-file" system for patent applications filed on or after March 16, 2013. The law also expanded the definition of prior art used in determining patentability. Actions and prior art that bar patentability under the Act include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expanded prior art to include foreign offers for sale and public uses. Applicants that do not publish their inventions prior to filing receive no grace period.

Proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention ("interference proceedings") were eliminated, because priority under the Act is determined based on filing date. An administrative proceeding—called a "derivation proceeding," similar to that currently used within some interference proceedings—is provided to ensure that the first person to file the application is actually an original inventor, and that the application was not derived from another inventor.

The AIA refers to the new regime as "First-Inventor-to-File (FITF)". This new regime operates differently from the "First-to-Invent" (FTI) regime previously in effect in the U.S. and the various "First-to-File" (FTF) regimes in place in the rest of the world. Different outcomes can occur under each of these three different regimes, depending on whether and how two different inventors publish or file patent applications.

Micro Entity Status Created

The Leahy–Smith America Invents Act (AIA) introduced the concept of a "micro entity" in patent law. This status was created for independent inventors with a previous calendar year gross income of less than three times the national median household income who have previously filed no more than four non-provisional patent applications, not including those the inventor was obligated to assign to an employer. A micro-entity also includes a university or an inventor under an obligation to assign the invention to a university.

The micro-entity status allows inventors to benefit from a 75% reduction in many of the patent fees payable to the US Patent Office during prosecution of a US patent application. The patent office is expected to develop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualify as a micro-entity.

Prior Commercial Use Defense Expanded

The Leahy-Smith America Invents Act (AIA) has expanded the prior commercial use defense, which can provide a legal defense to patent infringement. The defense arises from the use of processes, machines, materials or compositions, and serves to protect subsequent use of the same.

The AIA has expanded the prior user rights defense to cover all technologies, though it is rarely asserted and even more rarely litigated. The defense is personal and can only be asserted by the prior user or an entity under common control with the prior user.

The AIA has also expanded the definition of prior art used in determining patentability. Actions and prior art that bar patentability include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing.

The AIA has also eliminated interference proceedings, which resolved priority contests among near-simultaneous inventors who both file applications for the same invention. Instead, an administrative proceeding called a "derivation proceeding" is used to ensure that the first person to file the application is an original inventor, and that the application was not derived from another inventor.

Expedited Examination of U.S. Patent Applications

Expedited examination of a patent application has several potential benefits and detriments for patent applicants.

Potential Benefits

• Faster patent protection in the event of infringement soon after the filing of the patent application.
• Increased certainty regarding patent rights early in the product development stage.
• Provides incentives for investors if an early indication of allowability is received.

Potential Detriments

• Significant increase in government fees.
• Compacts the legal fees instead of spreading them out over 2-3+ years.
• Decreases the amount of time for a patent applicant to determine what type of patent protection they want based upon the final commercially developed product.
• Lose the ability to “mold” the claims based upon known copiers/infringers.
• Requires immediate attention to patent prosecution matters.

Pre-Issuance Submissions of Prior Art

The Leahy-Smith America Invents Act (AIA) was passed by Congress and signed into law by President Barack Obama on September 16, 2011. The law represents the most significant legislative change to the U.S. patent system since the Patent Act of 1952. The AIA introduced a new regime, the "First-Inventor-to-File" (FITF), which replaced the previous "first-to-invent" system. The FITF regime is based on filing dates, rather than invention dates.

The AIA permits any member of the public to submit potentially relevant prior art or other documents to the United States Patent and Trademark Office (USPTO) for consideration during the prosecution of a pending patent application. This process is believed to be a means to improve patent quality by allowing third parties who may have expertise in technology fields to assist the USPTO examiners in locating relevant prior art early in prosecution. The process may be employed with respect to the examination of any non-provisional utility, design or plant application, as well as any continuation-type application. The process may still be employed even if the application to which the submission is directed has been abandoned or has not been published.

The AIA does not restrict the types of publications that may be submitted. Patents, published patent applications, and other printed publications of potential relevance to the examination of the application may be submitted. The submission must include a concise description of the asserted relevance of each item identified in the submission. The submission must be made before the date a Notice of Allowance is given or mailed in the application or the date of the first rejection of any claim by the examiner during the examination of the application, whichever is later. The submission must be made within six months after the date on which the application is first published by the Office. The submission must be in writing and may be filed electronically or via first-class mail, United States Postal Service (USPS) Priority Mail Express® service, or delivery by hand. A fee of $180 for every ten items or fraction thereof identified in the submission is required, except where the submission is accompanied by the statement that the fee exemption applies to the submission. The fee exemption applies to a third-party submission listing three or fewer total items that is the first third-party submission by a third party, or a party in privity with the third party, in a given application.

Frequently asked questions