The Leahy–Smith America Invents Act (AIA) is a United States federal statute that was passed by Congress and was signed into law by President Barack Obama on September 16, 2011. The law represents the most significant change to the U.S. patent system since 1952, and closely resembles previously proposed legislation in the Senate in its previous session (Patent Reform Act of 2009).[1] Named for its lead sponsors, Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX),[2] the Act switches the U.S. patent system from a "first to invent" to a "first inventor to file" system, eliminates interference proceedings, and develops post-grant opposition. Its central provisions went into effect on September 16, 2012 and on March 16, 2013. From Wikipedia page
Provisions[edit]First to file and grace period[edit]
U.S. patentThe law switched the U.S. rights to a patent from the previous "first-to-invent" system to a "first inventor-to-file" system for patent applications filed on or after March 16, 2013. The law also expanded the definition of prior art used in determining patentability. Actions and prior art that bar patentability under the Act include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expanded prior art to include foreign offers for sale and public uses.[3] Applicants that do not publish their inventions prior to filing receive no grace period.
Proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention ("interference proceedings") were eliminated, because priority under the Act is determined based on filing date. An administrative proceeding—called a “derivation” proceeding, similar to that currently used within some interference proceedings—is provided to ensure that the first person to file the application is actually an original inventor, and that the application was not derived from another inventor.[4]
The AIA refers to the new regime as "First-Inventor-to-File (FITF)". This new regime operates differently from the "First-to-Invent" (FTI) regime previously in effect in the U.S. and the various "First-to-File" (FTF) regimes in place in the rest of the world. Different outcomes can occur under each of these three different regimes, depending on whether and how two different inventors publish or file patent applications.[5]
Opposition procedures[edit]The Act revised and expanded post-grant opposition procedures. The Act retained existing ex parte reexamination;[6] added preissuance submissions by third parties;[7] expanded inter partes reexamination, which was renamed inter partes review;[8] and added post-grant review.[9]
Additional changes[edit]The America Invents Act included the following changes:[10]
U.S. patentThe law switched the U.S. rights to a patent from the previous "first-to-invent" system to a "first inventor-to-file" system for patent applications filed on or after March 16, 2013. The law also expanded the definition of prior art used in determining patentability. Actions and prior art that bar patentability under the Act include public use, sales, publications, and other disclosures available to the public anywhere in the world as of the filing date, other than publications by the inventor within one year of filing (inventor's "publication-conditioned grace period"), whether or not a third party also files a patent application. The law also notably expanded prior art to include foreign offers for sale and public uses.[3] Applicants that do not publish their inventions prior to filing receive no grace period.
Proceedings at the U.S. Patent Office for resolving priority contests among near-simultaneous inventors who both file applications for the same invention ("interference proceedings") were eliminated, because priority under the Act is determined based on filing date. An administrative proceeding—called a “derivation” proceeding, similar to that currently used within some interference proceedings—is provided to ensure that the first person to file the application is actually an original inventor, and that the application was not derived from another inventor.[4]
The AIA refers to the new regime as "First-Inventor-to-File (FITF)". This new regime operates differently from the "First-to-Invent" (FTI) regime previously in effect in the U.S. and the various "First-to-File" (FTF) regimes in place in the rest of the world. Different outcomes can occur under each of these three different regimes, depending on whether and how two different inventors publish or file patent applications.[5]
Opposition procedures[edit]The Act revised and expanded post-grant opposition procedures. The Act retained existing ex parte reexamination;[6] added preissuance submissions by third parties;[7] expanded inter partes reexamination, which was renamed inter partes review;[8] and added post-grant review.[9]
Additional changes[edit]The America Invents Act included the following changes:[10]
- Tax strategy inventions: Any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, is deemed insufficient to differentiate a claimed invention from the prior art.
- False marking: The Act eliminated false marking lawsuits, unless filed by the U.S. government or a competitor who can prove competitive injury. In addition, marking a product with a patent that formerly covered the product, but has since expired, is no longer a violation.
Also in 2011, the United States Court of Appeals for the Federal Circuit clarified the standards for pleading False Patent Marketing Claims, which had become a source of prolific litigation, by providing a standard a false patent marking complaint must provide some objective indication to reasonably infer that the defendant was aware that the patent expired.[11] - Filing by other than inventor: An entity can file an application on behalf of an inventor who assigned or is under an obligation to assign the invention rights to the entity (or if the entity otherwise has financial interest in the invention), without seeking the inventor's execution of the application. However, any patent that issues belongs to the inventor, absent a written assignment from the inventor or inventor's estate to the entity.
- Best mode: Although an inventor is still required to “set forth” the best mode for accomplishing the invention, failure to disclose a best mode is not a basis for invalidating or rendering unenforceable an issued patent.[12] The law formally retains the best mode requirement, but by making insufficient disclosure no longer an allowable defense against patent infringement, the law renders best mode unenforceable. This has left many patent lawyers wondering why the requirement was kept at all.[13]
- Prior user rights defense: If an individual/entity begins using an invention ('user') more than a year before a subsequent inventor files for a patent on the same invention, then the user will have the right to continue using the invention in the same way after the subsequent inventor is granted a patent, as long as the user did not derive the invention from the subsequent inventor. These prior user rights are limited in scope and transferability, and have limited applicability to patents held by universities.
- Micro-entity: The AIA added a micro-entity status. A micro-entity includes an independent inventor with a previous calendar year gross income of less than 3 times the national median household income who has previously filed no more than four non-provisional patent applications, not including those the inventor was obligated to assign to an employer. A micro-entity also includes a university or an inventor under an obligation to assign the invention to a university. A micro-entity is entitled to a 75% reduction in many of the patent fees payable to the US Patent Office during prosecution of a US patent application. The patent office is expected to develop regulations to identify which fees will be eligible for the reduction and how joint inventors may qualify as a micro-entity.[14]
- Confidential Sale: The AIA may have overturned the long-standing rule that confidential sales of products containing the patented technology marks the beginning of the 1-year period to file the patent.[15] The Patent Office has issued examination guidelines stating that secret sales do not mark the beginning of the 1 year clock.[16] It is likely that the issue will ultimately be resolved in the courts.