The Leahy-Smith America Invents Act represents the most significant change in the patent law since 1836. The AIA was enacted into law on September 16, 2011. The objectives of the AIA are to grant patents in the United States with greater speed, quality and certainty, and for the USPTO to reach patentability decisions faster.
As of the first anniversary of the AIA on September 16, several new final rules went into effect for inventor’s oath/declaration, pre-issuance submission, patent owner claim scope statements, ex parte re-examination estoppel, supplemental examination and administrative patent trials (including post-grant review, inter partes review and covered-business-method review). Derivation proceedings, first-inventor-to-file and post-grant review will commence on March 16, 2013. Proposed rules have been issued for fees and first-inventor-to-file, as well as proposed examination guidelines.
The inventor’s oath/declaration may be filed at any time up to and including by the end of the time period set forth in a notice of allowability (which indicates that the application is in condition for allowance), provided that a signed application data sheet has been submitted that identifies each inventor by his or her legal name and states a mailing address and residence for each inventor.
A pre-issuance submission may be filed by third parties in pending or abandoned nonprovisional utility, design and plant applications, regardless of whether they were filed before or after September 16. Any third party may submit printed publications of potential relevance to the examination of an application for consideration and inclusion in the record of the application. The pre-issuance submission must include a concise description of asserted relevance of each reference submitted. The statutory time period is the later of (1) six months after the date on which the application is published by the USPTO or (2) the date of first rejection of any claim by the examiner.
Patent Owner Claim Scope Statements
Written statements may be submitted about the scope of the patent claims as filed by the patent owner in a federal court or USPTO proceeding. A patent owner may explain how any claim is patentable over the prior art.
Ex Parte Re-examination Estoppel
Estoppel may attach with respect to ex parte re-examination based on an inter partes review or post-grant review proceeding. A third-party requester is barred from filing an ex parte re-examination on the same patent after a final decision in a post-grant or inter partes review that was requested by the same party or their privies.
Patentees of patents issued on or after September 16 are now provided with a mechanism to immunize a patent from allegations of inequitable conduct. The request for supplemental examination may be filed by the patent owner at any time during the period of enforceability of the patent, which generally extends to six years after the expiration of the patent.
Administrative Patent Trials
The administrative trial final rules offer a third party a timely, cost-effective alternative to district court litigation for challenging the patentability of a claimed invention in an issued patent. The USPTO has published in the Federal Register a trial practice guide at Office Patent Trial Guide, Rule, 77 Fed. Reg. 48756 (August 14, 2012) for inter partes review, post-grant review and covered-business-method patent review proceedings commencing on or after September 16, as well as derivation proceedings commencing on or after March 16. The inter partes, post-grant and covered-business-method review final rules have been published in the Federal Register at Changes to Implement Inter Partes Review Proceedings, Post-Grant Review Proceedings and Transitional Program for Covered-Business-Method Patents; Final Rule, 77 Fed. Reg. 48680 (August 14, 2012).
• Inter Partes Review
All patents are eligible for inter partes review. A third party who has not previously filed a civil action challenging the validity of a claim may request inter partes review. A petitioner who requests to cancel as unpatentable one or more claims of a patent may only do so under 35 U.S.C. §102 or 103 and only on the basis of prior art consisting of patents or printed publications. The petition may be filed after the later of (1) nine months after the grant of a patent or issuance of a reissue patent or (2) the date of termination of any post-grant review of the patent.
• Post-Grant Review
Generally, patents issued from applications filed on or after March 16, 2013, (subject to first-inventor-to-file provisions) are eligible for post-grant review. A petition for post-grant review may be requested on or prior to the date that is nine months after the grant of a patent or issuance of a reissue patent. The petition must demonstrate that it is more likely than not that at least one of the claims challenged is unpatentable.
• Covered-Business-Method Review
The final rule implements a transitional program for covered business methods. A covered business method is generally defined in the AIA as a method or corresponding apparatus for performing data processing or other operations for financial products or services, but excludes patents for technological inventions. Technological inventions are generally defined in the Federal Register at Transitional Program for Covered-Business-Method Patents — Definitions of Covered-Business-Method Patent and Technological Invention; Final Rule, 77 Fed. Reg. 48734 (August 14, 2012). Solely for the purpose of the transitional program, the following will be considered: (1) whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art and (2) solves a technical problem using a technical solution. Third parties may file a petition to request the USPTO to conduct a post-grant review relating to the patentability of a covered business method.
On or after March 16, 2013, a patent applicant may file a petition to institute the derivation proceeding with regard to applications for patent and any patent issuing thereon, within one year of the date of first publication of a claim to an invention that is the same or substantially the same (i.e., patentably indistinct) as the earliest application’s claim to the invention. The first publication may be either a patent or an application that has been published under 35 U.S.C. §122(b), including a publication of an international application that designates the United States as provided by 35 U.S.C. §374. The petition must set forth the basis for finding that an inventor named in an earlier application or patent derived the claimed invention. The derivation must certify that the inventor from whom the invention was derived did not authorize the filing of the earliest application claiming such invention.
Proposed Rule: Fees
The proposed rule has been published in the Federal Register at Setting and Adjusting Patent Fees; Proposed Rule, 77 Fed. Reg. 55028 (September 6, 2012). Comments are due by November 5. The objectives of the proposed rule include ensuring that the patent fee schedule generates sufficient aggregate revenue to recover the aggregate cost to optimize patent timeliness and quality and fostering innovation. The USPTO aims to reduce total patent application pendency by more than 12 months by undertaking measures such as re-engineering the patent examination process, offering prioritized examination to applicants and implementing a sustainable funding model. Fee reductions are proposed for small and micro entities.
Proposed Rule: First-Inventor-to-File
The proposed rule has been published in the Federal Register at Changes To Implement the First-Inventor-To-File Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 43742 (July 26, 2012) and the proposed examination guidelines have been published in the Federal Register at Examination Guidelines for Implementing the First-Inventor-to-File Provisions of the Leahy-Smith America Invents Act, 77 Fed. Reg. 43759 (July 26, 2012). Comments were due by October 5. The effective date of the first-inventor-to-file provisions is March 16, 2013. The first-to-file provisions apply to any application or patent that contains or contained at any time a specific reference under 35 U.S.C. §120, 121 or 365(c) to an application that contains, or contained at any time, a claimed invention having an effective filing date on or after March 16, 2013.
A patent is precluded under 35 U.S.C. §102(a)(1) if a claimed invention was, before the effective date of the claimed invention, either patented, described in a printed publication, in public use, on sale or otherwise available to the public. However, there are certain exceptions available under 35 U.S.C. §102(b)(1)(A), if a disclosure has been made one year or less before the effective filing date of the claimed invention and the disclosure was made by the inventor or joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor. Such a disclosure will not be considered as prior art.
A patent is precluded under 35 U.S.C. §102(a)(2) to a different inventive entity if a claimed invention was described in a United States patent, United States patent application publication or a Patent Cooperation Treaty patent application publication that was effectively filed before the effective filing date of the claimed invention. However, a disclosure in an application or patent shall not be prior art under 35 U.S.C. §102(a)(2) if: (1) the disclosure was made by another who obtained the subject matter directly or indirectly from the inventor or joint inventor, according to 35 U.S.C. §102(b)(2)(A); (2) the subject matter disclosed was, before such subject matter was effectively filed, publicly disclosed by the inventor or joint inventor or another who obtained the subject matter directly or indirectly from the inventor or joint inventor, according to 35 U.S.C. §102(b)(2)(B); or (3) the subject matter and the claimed invention were commonly owned or subject to an obligation of assignment to the same person not later than the effective filing date of the claimed invention, according to 35 U.S.C. §102(b)(2)(C).
The USPTO offers resources on the AIA. There is a helpline that can be reached at 1-855-HELP-AIA or HELPAIA@uspto.gov. In addition, a frequently asked questions Web page is available at www.uspto.gov/aia_implementation/faq.jsp.
The AIA represents the most significant change in the United States patent law in more than 150 years. While certain aspects of patent practice and the USPTO’s operations will continue to evolve as a result of the AIA, the objective of granting patents with greater speed, quality and certainty, and faster decision-making, is most welcome. •
Ralph F. Manning is a shareholder of Tucker Arensberg, with offices in Pittsburgh and Harrisburg. He has represented businesses and individuals for more than 35 years in intellectual property, transactional and business law matters. He has been a licensed patent attorney since 1973.
Lee Kim is an attorney with the firm. She has represented businesses and individuals in intellectual property, information technology and health law matters. She has been a licensed patent attorney since 2002.