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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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8.3 "Prior User Rights Defense" – America Invents Act

Prior User RIghts Defense America Invents Act Patent Law

Prior User RIghts Defense America Invents Act Patent Law


America invents act section 5 creates a defense for accused infringers.  Prior user rights defense previously allowed an individual to escape patent infringement if the patented subject matter was commercially used by the individual or entity at least one year before the effective filing date of first disclosure.

Previous prior use defense offered limited defense against those charged with infringement of the business method patent however this defense is now expanded in this provision.  The new defense allows the individual to increase the quantity or volume of use of the prior use subject matter and also extends the protection to improvements not claimed in the patent.

There are limitations on the defense:

  1. It can only be asserted by the individual or entity that performed or directed the the commercial use.
  2. The right to assert the defense cannot be licensee transferred except through good-faith transfer of part or all of the business in which the use exists.
  3. Abandonment of commercial use is a statutory bar against further future use unless the commercial use resumed more than one year before the effective filing date or first disclosure.
  4. The defense may only be asserted at sites for which the commercial use was present before the later of: the effective filing date, the date of assignment or transfer of the business.

Defense cannot be asserted against the claimed invention that was owned or subject to assignment to a university or technology transfer organization at the time the invention was made.  In order to qualify the university or technology transfer organizations main purpose must be to facilitate the commercialization of technologies developed by the universities.  The university exception does not apply to the activity required to reduce the invention to practice if the activity required is research the federal government is prohibited from funding.

Key dates

September 16, 2011

  • Date the expanded prior user rights defense became effective
  • Applies to any method or process patent issued on or after such date

Key concepts

  • Previous prior user defense expanded
  • Defense if used one year before the effective filing date
  • New defense allows increase in quantity or volume of use
  • New defense also includes improvements not claimed in the patent limitations
  • Only by individual or entity that perform prior use
  • Defense cannot be transferred, unless the businesses bought
  • Defense can only be used at sites which had prior use of the invention
  • abandonment of commercial uses statutory bar against using the defense
  • Universities and technology transfer organizations excluded from defense if previously owned the invention
  • Sole purpose must be the transfer of technology for commercialization

Rules and Laws

  • 35 U.S.C. 273