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8.0 – America Invents Act (AIA)

Passed on September 16, 2011 this Act represents a major change in the United States patent system.

Some major changes include: removal of the inter partes reexamination, addition of the inter partes review and post grant review (replacing the inter partes reexamination), removal of best mode as a grounds for invalidating a granted patent, addition of micro entities as a subset to the small entity which will receive 75% off certain fees, extension of prior user rights defense, implementation of a prioritized examination, removal of certain restrictions on the Oath/Declaration, implementation of the supplemental examination, cancelation of the statutory invention registration option, moving from first-to-invent to first-inventor-to-file and addition of the derivation proceeding as a safeguard to the first-inventor-to-file system.

The USPTO will begin testing on this additional material beginning October 2012.  As with all new questions on the patent bar exam, these questions will be first entered into the exam as beta questions and will be subsequently moved to regular scored questions once this beta phase is complete.

The following topics of the America Invents Act will be discussed in different posts of the study blog:

Also, the USPTO has a nice website which has a lot of helpful information on the new America Invents Act implementation.  Click on the picture below to be taken to this website and review.  Please take note of the information on the left side of the website for easy navigation of the various resources available to you.

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8.13 “Misc Other 1” – America Invents Act

Fee Setting Authority 15% Transition Surcharge Human Organism Prohibition Inter Partes Reexamination Threshold America Invents Act Patent Law

Fee Setting Authority 15% Transition Surcharge Human Organism Prohibition Inter Partes Reexamination Threshold America Invents Act Patent Law

15% Transition Surcharge

Overview

Section 11 of the America invents act implements a 15% increase to all fees charged or authorized by 35 USC 41, sections A, B, and D1.

If applicant forgets to pay excess fees after effective date the submission will be treated as having insufficient payment.

Key dates

September 26, 2011

  • Fee increase went into effect

Key concepts

  • 15% fee increase
  • Fees charged under35 USC § 41
    • Subsection (A)
    • Subsection (B)
    • Subsection (D)(1)

Rules and Laws

  • 35 U.S.C. § 41
    • Subsection (A)
    • Subsection (B)
    • Subsection (D)(1)
  • 35 U.S.C. § 132(b)

 

Electronic Filing Incentive

Overview

Section 10 of the America invents act establishes an additional fee of $400 or $200 for small entities for each patent application not filed electronically.

Key Dates

November 15, 2011

  • Effective date of the electronic filing incentive

Key Concepts

  • $400 additional fee for not filing through EFS
  • $200 reduced fee for small entity

Rules and Laws

  • 37 C.F.R. §§ 1.16
  • 37 C.F.R. §§ 1.445

 

Fee Setting Authority

Overview

Section 10 of the America invents act, congress gives authority to the USPTO to set and adjust fees to recover costs associated with patent examination and validation.

Key dates

September 16, 2011

  • USPTO granted authority

September 16, 2012

  • first phase establishing fees for new proceedings

October 5, 2012

  • finishing first phase

February 2013

  • finishing second phase

Key Concepts

  • Director of USPTO has authority to set/adjust fees
  • Authority includes fees for new services

Rules and Laws

  • 35 U.S.C. § 41

 

Human Organism Prohibition

Overview

Section 33 of the America invents act makes certain that claimed invention encompassing a human being are not patentable subject matter under 35 USC 101.

Key dates

September 16, 2011

  • When this provision went into effect

Key Concepts

  • Inventions encompassing a human being not patentable
  • Attempts rejected under 35 U.S.C. 101 as non-statutory subject matter

Rules and Laws

  • 35 U.S.C. § 101

Inter Partes Re-Examination Threshold

Overview

The America invents act section 6 establishes a one-year time period in which inter partes re-examination is utilized with a different threshold for granting the examination

Previous inter partes re-examination required a substantial new question of patentability to initiate the inter partes re-examination. With the new inter partes review the requester must only show a reasonable likelihood that they will prevail with respect to at least one claim in the challenged patent.

Key dates

September 16, 2011

  • When the new standard for inter partes re-examination became effective

September 16, 2012

  • When inter partes re-examination is replaced by inter partes review

Key concepts

  • Inter partes re-examination no longer an option
  • Inter partes review replaces inter partes re-examination
  • Inter partes review only requires a reasonable likelihood versus inter partes re-examination requiring a substantial new question of patentability
  • The purpose is to eliminate many of petitions that would not succeed during review before review is instituted
  • Current inter partes reexamination will not be converted to inter partes review if filed before effective date