Patent Law Changes Summary - The America Invents Act as of Sept.2012


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Brief summary of new patent laws under the Leahy-Smith America Invents Act

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Patent Law Changes Summary - The America Invents Act as of Sept.2012

  1. 1. 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
  2. 2. 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 The previous requirement that a patent must disclose the best known method of practicing the invention is repealed to the extent that(2) Patent Reexamination: New Threshold failure to disclose the best mode cannot beReexamination now requires requester to show used to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 atunpatentable in view of newly presented prior the Patent 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.
  3. 3. 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False their own fees.Patent Marking lawsuit and keep the proceeds (ii) a new category of micro-entity fees for smallis repealed.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 process completed within 12 months.D.C.
  4. 4. 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, and are no longer required to state anywhere in the world, will defeat patentability.they were the original and first inventor. Previously, the law only recognized acts within the U.S.(11) Owner FilingsApplications may be filed directly by patent (ii) U.S. patent applicationsowners originating from foreign patent filings are now prior art as of their foreign filing date for 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.
  5. 5. 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 theydecision on patentability within 12 months. are submitted with an explanation of their relevance.(14) Pre-Grant Public Access for Providing PriorArt in Pending Applications (16) Public Protests Against PendingAlso known as Third Party Pre-grant 122(e) ApplicationsSubmissions, this allows anyone to submit Under Section 291, this allows anyone toprinted publications (only) into applications submit a blind protest against an unpublished pending patent application, along with prior artcurrently under active examination, provided publications (only) into unpublished pendingthey are submitted before the first Examiners patent application files, provided they areReport or within six months of the publication submitted with an explanation of their relevancedate, and 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).
  6. 6. 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.
  7. 7. 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 feetwenty (20) claims of a granted patent in view of 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(RLP) that at least one granted claim is that it is "MORE LIKELY THAN NOT" (MLTN)unpatentable in view of newly presented prior that at least one granted claim is unpatentableart patents or publications. in view of newly presented prior art patents or publications or any other requirement for patentability.
  8. 8. 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.
  9. 9. 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(#1) is not prior art against (#2) a claimed law has been previously for all practicalinvention if they were commonly owned at the purposes except in cases where a patenttime of filing. Sec. 102(b)(2)(C). Effective forapplications filed on or after 3/16/2013. interference lawsuit was previously filed. Now, the Patent Office has established a DerivationThe definition of commonly owned includes Proceeding to replace the former interferencesubject matter and claimed inventions that were proceeding, that will allow patent applicants todeveloped under a joint research agreement, file a request that the Patent Office institute awhere the agreement was in effect at the time of trial to determine whether an earlier-filed patentfiling, the claimed invention was made as a applicant has derived the invention from them,result of the agreement, and the application is provided that the request is made within twelveamended to state the names of the parties tothe joint research agreement. Sec. 102(c). (12) months after the first publication of theEffective for applications filed on or after earlier-filed applicants claim.3/16/2013.