001 The America Invents Actasof Sept.2012 Patent Law Changes Summary
The America Invents Act as of Sept. 2012 -Patent Law Changes Summary absolutely, positively the shortest, most concise summary in laymans termsof changes to U.S. patent law that youve (probably) ever seen by Todd L. Juneau
Patent Law changes as of Sept. 16, 20111) Prior User Defense (3) Tax StrategiesAn accused infringer may avoid liability by Tax strategies are deemed unpatentable by law.proving that it commercially used the inventionmore than one (1) year before the effective filing (4) Best Modedate of the patent. The previous requirement that a patent must disclose the best known method of practicing the invention is repealed to the extent that(2) Patent Reexamination: New Threshold failure to disclose the best mode cannot beReexamination now requires requester to show used to invalidate the patent, render ita "REASONABLE LIKELIHOOD TO PREVAIL" unenforceable or cancel it. However, applicants(RLP) that at least one granted claim is must still meet the best mode requirement at theunpatentable in view of newly presented prior Patent Office.art patents or publications. (5) Human organismsReexamination previously required requester to Human organisms are deemed unpatentable byshow that a Substantial New Question (SNQ) of law.Patentability arose because of newly found priorart patents or publications.
Patent Law changes as of Sept. 16, 2011(6) False Marking (8) USPTO FeesThe previous private enforcement right (called a (i) the Patent Office now has the authority to setQui Tam lawsuit) that anyone could file a False their own fees.Patent Marking lawsuit and keep the proceeds (ii) a new category of micro-entity fees for smallis repealed. inventors is established which reduces fees by 75%.(7) Court ChangeLawsuits against the Patent Office are now (9) Fast-Track Examination (9/26/2011)brought at the District Court in Alexandria and Applicants for Patent may file a petition and feeno longer at the District Court in Washington of $4800 to have the patenting processD.C. completed within 12 months.
Patent Law changes as of Sept. 16, 2012(10) Inventors Declaration (12) New Definition of Prior ArtInventors now only need to state under oath or (i) Any public use or prior sale of thepenalty of law that they were the original invention before the filing date of the invention,inventor, the application was authorized by anywhere in the world, will defeat patentability.them, and include 18 USC 1001 statement. Previously, the law only recognized acts withinThey are no longer required to state they were the U.S.the original and first inventor. (ii) U.S. patent applications(11) Owner Filings originating from foreign patent filings are nowApplications may be filed directly by patent prior art as of their foreign filing date forowners defeating patentability. Previously, the law only recognized the date these applications were actually filed in the U.S. (iii) U.S. inventors still have a one (1) year grace period after making the invention public to get a patent application on file.
Patent Law changes as of Sept. 16, 2012(13) Certain Important Technologies given (15) Post-Grant Public Access to Lodge PriorAutomatic Fast-Track Art in Granted Patent filesInventions relating to the environment, energy, Also known as Third Party 501 Submissionsrenewables, greenhouse gases, and counter- allows anyone to submit printed publicationsterrorism may be fast-tracked and receive a (only) into granted patent files, provided they aredecision on patentability within 12 months. submitted with an explanation of their relevance.(14) Pre-Grant Public Access for Providing Prior (16) Public Protests Against PendingArt in Pending Applications ApplicationsAlso known as Third Party Pre-grant 122(e) Under Section 291, this allows anyone to submitSubmissions, this allows anyone to submit a blind protest against an unpublished pendingprinted publications (only) into applications patent application, along with prior artcurrently under active examination, providedthey are submitted before the first Examiners publications (only) into unpublished pendingReport or within six months of the publication patent application files, provided they aredate, and with an explanation of their relevance. submitted with an explanation of their relevance and the patent office is able to match up the Protest with the appropriate application (held in secret until published).
Patent Law changes as of Sept. 16, 2012(17) Supplemental Examination (18) Patent-Owner Initiated Re-ExaminationA new service offered by the Patent Office, Also known as Ex Parte Reexamination, aknown as Supplemental Examination, allows a patent owner (only), upon payment of a fee ofpatent owner (only), upon payment of a fee of $17,750, may directly request the USPTO to$5,180, to request that the USPTO consider, consider, reconsider or correct the patent wherereconsider or correct the patent where a patent a patent or publication (only) is believed to raiseor publication (only) is believed to raise a a Substantial New Question (SNQ) ofSubstantial New Question (SNQ) of Patentability. If the Patent Office findsPatentability. The Patent Office will make this patentability not to be questionable, the requestdetermination within three (3) months of the will be denied and the fee of $16,120 refundedrequest. No amendments or interviews are less a processing fee of $4,320.allowed. If no question of patentability is found,a Certificate will issue to that effect. If thePatent Office finds patentability to bequestionable, an Ex Parte Reexamination willbe ordered and a fee of $16,120 assessed,refundable if the Ex Parte Reexamaintion is notinstituted.
Patent Law changes as of Sept. 16, 2012(19) Public Patent Opposition - Prior Art Only (20) Public Patent Opposition - Any Reason forAlso known as Inter Partes Review (IPR) and Invaliditypreviously known as inter partes (third party) Also known as Post Grant Review (PGR) andreexamination, anyone may request, within nine previously known in limited form as inter partes(9) months from the issuance of the patent, (third party) reexamination, anyone mayupon payment of a fee of $27,200, that the request, within nine (9) months from thePatent Office review the patentability of up to issuance of the patent, upon payment of a fee oftwenty (20) claims of a granted patent in view of $35,800, that the Patent Office review allprior art patents or publications (only). aspects of the validity of up to twenty (20) claims of a granted patent.The threshold for the Patent Office to grant therequest is whether the requester has shown a The threshold for the Patent Office to grant the"REASONABLE LIKELIHOOD TO PREVAIL" request is whether the requester has shown that(RLP) that at least one granted claim is it is "MORE LIKELY THAN NOT" (MLTN) that atunpatentable in view of newly presented prior least one granted claim is unpatentable in viewart patents or publications. of newly presented prior art patents or publications or any other requirement for patentability.
Patent Law changes as of Sept. 16, 2012(21) Pro Bono Patent Program (22) Patent OmbudsmanThe Patent Office will now offer free help to low- The Patent Office will establish a Patentincome inventors to assist them in obtaining a Ombudsman to assist and advocate on behalfpatent. This program will be available in of Small Businesses and Solo Inventors whoMinnesota, Denver, Silicon Valley, Dallas, run into difficulties at the Patent Office.Washington DC, and New York City.
Patent Law changes as of Mar. 16, 2013(23) Commonly Owned Exception to Prior Art (24) Derivation Proceedings Patents will be granted to the first applicant toException: A patent or published application file, which is pretty much the same as patent law(#1) is not prior art against (#2) a claimed has been previously for all practical purposesinvention if they were commonly owned at the except in cases where a patent interferencetime of filing. Sec. 102(b)(2)(C). Effective for lawsuit was previously filed. Now, the Patentapplications filed on or after 3/16/2013. Office has established a Derivation Proceeding to replace the former interference proceeding,The definition of commonly owned includes that will allow patent applicants to file a requestsubject matter and claimed inventions that were that the Patent Office institute a trial todeveloped under a joint research agreement, determine whether an earlier-filed patentwhere the agreement was in effect at the time of applicant has derived the invention from them,filing, the claimed invention was made as a provided that the request is made within twelveresult of the agreement, and the application is (12) months after the first publication of theamended to state the names of the parties to earlier-filed applicants claim.the joint research agreement. Sec. 102(c).Effective for applications filed on or after3/16/2013.