Leahy-Smith America Invents Act Enacted September 16, 2011

On November 5, 2011, in News, Patents, by Natalie Raffoul

US President Barack Obama has recently signed into law the Leahy-Smith America Invents Act.  Some of the more significant changes and when they come into force are outlined below:

FEE INCREASES AND CHANGES

All fees are scheduled to go up by 15%, until adjusted by the USPTO.  Prioritized examination is available with the payment of a fee.

EFFECTIVE DATE: Immediate

 

MOVE TO FIRST TO FILE/DISCLOSE SYSTEM

The USPTO will be moving to a first to disclose or file, not first to invent, system to determine who receives a U.S. patent.  In this modified “first-to-file” system, other patent applications can only be citable as prior art if they precede the earlier of the earliest filing date of the application and a publication of the invention by the inventor or a related party.

Thus, where two separate parties independently file patent applications for the same invention, the applicant that has the earliest filing date or publication date is entitled to a patent.

EFFECTIVE DATE: March 2013

 

“PRIOR-USE” DEFENSE TO INFRINGEMENT

A “prior-use” defense has been created by which a party who internally commercially used or sold a patented invention or a product at least one year prior to the effective filing date of an application or first publication date, will be able to assert a “prior-use” defense against an infringement claim.

EFFECTIVE DATE: Immediate

 

ASSIGNEE FILING APPLICATION IN LIEU OF or “ON BEHALF OF” UNCOOPERATIVE INVENTOR

35 USC §118 allows for the filing of a patent application by one to whom the inventor has assigned or has an obligation to assign the invention.  Corporations can thus file applications on behalf of an uncooperative employee if the employee has assigned the invention or is under an obligation to assign the invention.

EFFECTIVE DATE: September 2012

 

PRIOR ART CHANGES

Any third-party disclosures made before a patent application’s filing date are now considered prior art.

EFFECTIVE DATE: March 2013

 

ONE-YEAR “GRACE PERIOD” IS NOW PERSONAL TO INVENTOR

35 USC §102(b) creates a one-year grace period only for disclosures made by, or derived from, the inventor.  The application of the grace period to uses and sales is still unclear.

EFFECTIVE DATE: March 2013

 

CO-OWNED APPLICATIONS OR PATENTS NOT CITABLE PRIOR ART

Under 35 USC §102(b) applications and patents that are co-owned or coassigned are not prior art for either novelty or non-obviousness purposes.  This is a change from prior law in which co-owned prior art was only exempted for obviousness.    (this wasn’t 102 c but 102b (2))

EFFECTIVE DATE: March 2013

 

SUPPLEMENTAL EXAMINATION

New section 35 USC §257 creates a supplemental examination process which allows a patent holder to correct a patent, without the need to identify an error in the patent as required for reissue.  If the supplemental examination indicates a substantial new question of patentability, the patent shall be re-examined.

EFFECTIVE DATE: Sept 2012

 

POST GRANT REVIEW (PGR) PROCESS (“OPPOSITION”)

Sections 35 USC §§ 321-329 provide for a new post grant review (PGR) of a patent or reissued patent by anyone other than the patentee. The information provided by the third party in the petition for PGR must demonstrate that it is more likely than not that at least one claim is unpatentable. The petition must be submitted within 9 months of issuance of the patent and the review must be completed within one year, and is extendable by six months for good cause.

The patent owner has the right to respond to the petition.  The petition will not be granted unless the Director determines that the information presented in the petition successfully demonstrates that it is more likely than not that at least one of the claims challenged in the petition is unpatentable.

EFFECTIVE DATE: September 2012

 

PRE-GRANT AND POST-GRANT SUBMISSIONS BY PATENTEE AND BY THIRD PARTIES

35 USC §122 provides for third party submissions of patents, published patent applications, and printed publications of potential relevance to the examination of the application.  This can be done before the notice of allowance is mailed or before the first rejection or six months after publication, whichever is later.

35 USC §301 provides for third party submissions of material which the third party believes to have a bearing on the patentability of any claim of a patent.  The material can be patents or printed publications or statements of the patent owner in Federal Court or before the PTO in which the patent owner took a position on the scope of any claim of a particular patent.  If the third party making the submission explains in writing the pertinence and manner of applying the material to at least one claim of the patent, the citation becomes part of the official file of the patent.  The patent owner’s statements can thus now be used to affect the patentability or scope of any claim in an issued patent.

EFFECTIVE DATE: September 2012

 

NEW DERIVATION PROCEEDINGS

Previously, if two patent applications essentially claimed the same invention, a complex proceeding called an interference was started to determine who was the true inventor of the invention.   Interferences are to be replaced with Derivation Proceedings under 35 USC §135 and 35 USC § 291.  Patentees or applicants who believe their invention was misappropriated by another who has an application or patent for the same invention may seek relief by civil action from in a derivation proceeding.  If there are competing issued patents, civil action may be taken and if there are competing applications the proceeding is before the Patent Trial and Appeal Board.

EFFECTIVE DATE: March 2013

 

HUMAN ORGANISM CLAIMS BARRED FROM ISSUANCE

The Act also barred from issuance any claims “directed to or encompassing a human organism”.  The language is ambiguous and future interpretations and practice will determine the true extent of the prohibition.

EFFECTIVE DATE: Immediate

 

An outline of the implementation of the new Act can be found at the USPTO website at:

http://www.uspto.gov/patents/init_events/aia_implementation.jsp

 

 

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