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America Invents Act What Does It Mean For Inventors, Applicants And Patentholders

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On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. Highly controversial among patent practitioners, the AIA mandates sweeping changes to the patent system of the United States – changes that patrons of the Patent and Trademark Office (PTO) should be familiar with. Many provisions of AIA do not take effect for a year or more after this date including those most widely known:
Many provisions of the AIA do not take effect for at least a year after this date including those most far-reaching – (1) procedures for post-grant review proceedings before the U.S. Patent and Trademark Office (after September 16, 2012) and (2) a change to a first inventor to file system (after March 16, 2013). Other provisions, however, take immediate effect as of the day of signature (September 16, 2011) or as of the day of enactment (September 26, 2011). Our summary lists most of the major provisions according to their effective dates. We have only hit the high points – the actual text of the AIA runs well over a hundred pages.

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America Invents Act What Does It Mean For Inventors, Applicants And Patentholders

  1. 1. New! America Invents Act Sept, 21, 2011 ♦What does it mean for Inventors, Applicants and Patentholders? Patents are one of the best ways to protect new products and processes. For 12 years, I have been helping people with their innovations.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  2. 2. On September 16, 2011, President Obama signed the America Invents Act (AIA) into law. Highly controversial among patent practitioners, the AIA mandates sweeping changes to the patent system of the United States – changes that patrons of the Patent and Trademark Office (PTO) should be familiar with. Many provisions of AIA do not take effect for a year or more after this date including those most widely known:Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  3. 3. Many provisions of the AIA do not take effect for at least ayear after this date including those most far-reaching – (1)procedures for post-grant review proceedings before theU.S. Patent and Trademark Office (after September 16,2012) and (2) a change to a first inventor to file system(after March 16, 2013).Other provisions, however, take immediate effect as of theday of signature (September 16, 2011) or as of the day ofenactment (September 26, 2011).Our summary lists most of the major provisions accordingto their effective dates. We have only hit the high points –the actual text of the AIA runs well over a hundred pages.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  4. 4. Provisions taking effect on September 16, 2011:AIA creates a new class of Applicant, “micro-entities”, entitledto a 75% reduction in fees.To qualify as a micro-entity, an Applicant must (1) meetrequirements of regulations yet-to-be issued by the PTO, (2)have not been named on more than 4 patent applications, (3)not have a gross income more than 3x the median householdincome for the preceding year, and (4) not have assigned theapplication to an entity whose income exceeded that amount.AIA limits issue of patent claims directed to or encompassinga human organism for any Application pending on or filedafter September 16, 2011.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  5. 5. Provisions taking effect on September 16, 2011:AIA expressly excludes tax preparation inventions.AIA creates an option for “Prioritized Examination” forpayment of a $4800 fee in addition to the usual filing,search, examination, processing and publication fees,reducible by 50% for small entities.AIA mandates that the PTO work with IP law associationsto establish pro bono programs to assist under-resourcedinventors and small businesses.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  6. 6. Provisions taking effect on September 26, 2011:•A 15% surcharge will be added to statutory patent-relatedfees and patent maintenance fees.Provisions taking effect on November 15, 2011:•A $400 surcharge will be added to filing fees for Applicationsthat are not e-filed, reducible by 50% for small entities.Several other aspects of the law also go into effectimmediately, including preclusion of multiple, unrelatedparties in one patent suit, changes to the standard forgranting reexamination requests, elimination of failure todisclose the best mode as a defense to infringement, virtualpatent marking, and a requirement of actual injury for falsemarking suits. Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  7. 7. THE BIGGIES The First Inventor to File System: Effective 18 months from enactment (March 26, 2013) Historically, the United States patent system hasbeen a first-to-invent system, which means that the partywho could prove that he or she was the first to invent wasentitled to the patent, no matter who got to the PatentOffice first to file their application.The United States has been alone in maintaining the first-to-invent standard. Virtually all other nations follow a first-to-file standard. AIA does away with the first-to-inventstandard, adopting the first-to-file standard common in therest of the world.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  8. 8. THE BIGGIES The First Inventor to File System: Effective 18 months from enactment (March 26, 2013)While the adoption of the first-to-file standard will bring the US into closer alignment with the rest of the world indetermining priority of invention, the abandonment of the first-to-invent standard has generated extraordinary controversyLaw Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  9. 9. Post-Grant ReviewUnder United States law, there has always existed a strongpresumption that an issued patent is valid, and it was anarduous process to have a Federal Court rule an issuedpatent invalid.For a few years now, there has been a process, called interpartes (“between parties”, in other words, adversial)Reexamination.A barrier to requesting this type of reexamination was thatthe requestor had to demonstrate that there existed asignificant new question of patentability for the issuedpatent.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  10. 10. Post-Grant ReviewAIA creates a new post-grant review procedure for patentsissuing from applications having an effective filing date onor after March 26, 2013.The new post-grant procedure provides a nine-monthwindow for challenging and issued patent on any ground.In order for Review to be granted, the challenger must showthat it is more likely than not that at least one of the claimsof the challenged patent is unpatentable.Even after the nine-month window, has passed, the patentis still subject to inter partes Reexamination on the basis ofpatents or printed publications only.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  11. 11. One-year Grace Period: Effective 18 months from enactment (March 26, 2013) Most other nations of the world follow a standardof Absolute Novelty, meaning that an invention, in order tobe patentable, could not have been publicly used ordisclosed or offered for sale in any way prior to filing theapplication.US law has permitted a one-year grace period for suchuses and disclosures.The grace period is retained but is narrowed significantly toinclude only public disclosures by the inventor.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  12. 12. Interference Proceedings There has been a long-standing provision in US lawfor Interferences, a proceeding in which the party bringing theInterference has the opportunity to prove prior invention.Because the new law does away with the first-to-inventstandard, the question of priority of invention has beenrendered moot and there is no longer a need forInterferences.Under AIA, the Interference is replaced with a Derivationproceeding for determining whether an inventor of an earlier-filed application impermissibly derived his invention from aninventor in a later-filed Application. Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  13. 13. New! America Invents Act Sept, 21, 2011 ♦What does it mean for Inventors, Applicants and Patentholders?Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  14. 14. New! America Invents Act Sept, 21, 2011 ♦What does it mean for Inventors, Applicants and Patentholders?There is much more to AIA, but these are the high points.The above writing is informational only and does not constitute legal advice.Law Office of Christopher Peil * San Francisco, California * (T) 415-896-4254 * Cpeil2@comcast.net
  15. 15. Law Office of Christopher Peil555 Fulton St. #108San Francisco, California 94102Land: 415-896-4254cpeil2@comcast.net

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