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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

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8.15 “Misc Other 3″ – America Invents Act

Transitional Program for Covered Business Method Patents Repeal of Statutory Invention Registration America Invents Act Patent Law

Transitional Program for Covered Business Method Patents Repeal of Statutory Invention Registration America Invents Act Patent Law

Transitional Program for Covered Business Method Patents

Overview

Section 18 of the America invents acts provides for post grant review proceedings for covered business method patents.  Transitional program for covered business method patents will employ the same standards and procedures as post-grant review.  It aims to give parties an alternative to litigation.

Specifics

Claims must state a method or corresponding apparatus for performing data processing or other operations using the practice, administration, or management of the financial products are service to have petition for transitional preceding filed. Technological inventions do not qualify for this.

Petition can challenge based on 101, 102, or 103 on any grounds.  Prior art must be equal to that of 102(a) and as such is not limited to patents and printed publications but can include prior use and unpublished evidence.  It is the director’s decision to determine if it is more likely than not that the petitioner will prevail on at least one claim challenged.  If this is the case the proceeding will be instituted.  The directors decision is non-appealable.

A third party may only request transitional proceeding if the real party in interest has been sued for or charged with infringement under the patent.

After the final written decision the parties are barred from filing civil action or initiating a proceeding before the international Trade Commission on any grounds petitioner raised during the transitional proceeding.  The petitioner has a right to appeal the final decision.

Petitioner must wait nine months after the grant of the patent or issuance of the reissue to file a petition for the transitional proceeding.

Key dates

September 16, 2012

  • When provision became effective
  • Applies to all patents issued on before or after that date

September 16, 2020

  • When the program will expire

August 14, 2012

  • Final rules published

 

Repeal of Statutory Invention Registration

Overview

The statutory invention registration is repealed through section 3 of the America events act.  The statutory invention registration was designed for inventors who did not wish to get a patent but instead wanted to prevent others from obtaining a patent on the invention.  The 18 month publication procedure decreased substantially the use of the statutory invention registration and the America invents act eliminates this tool altogether.

Key dates

March 16, 2013

  • The repeal of the statutory invention registration because effective

Key concepts

  • SIR are not widely used because the 18 month publication.
  • The statutory invention registration allows inventors who do not wish to get a patent to stop others from obtaining a patent on the invention