America Invents Act: How the New Law Impacts Your Clients and Your Patent Practice, Part 2


On September   26, 2011, I attended PLI’s program on the America Invents Act via webcast.  For those of you who were lucky enough to attend it, I’m sure you would agree  that the panel of experts delivered an extremely informative and concise program.  As I listened to each speaker deliver his/her presentation, it confirmed that the AIA is a major overhaul of the U.S. patent law.  It’s going to take quite some time for the patent community to really get a handle on all the nuances of the legislation.  With that being said, the program’s esteemed panel did an excellent job breaking down the various provisions in AIA and helping to make sense of  how it pertains to your patent practice.  According to Gene Quinn, of IPWatchdog and Patent Center Contributor, PLI is considering reprising the presentation for an audience at PLI’s New York City location. Keep you posted.

In a previous post, I highlighted the key points from Robert A. Armitage’s, of Eli Lilly and Company, presentation entitled ”A New 102: Reform, Not Recodification”.  Here are highlights from Janet Gongola’s, Patent Reform Coordinator at the USPTO, presentation entitled “USPTO Implementation of the America Invents Act”.

Challenges of Implementation:

  1. Numerous provisions to implement simultaneously – need to ensure that regulations and/or guidance is complementary and not at odds
  2. Short time periods – date of enactment, 12 months, 18 months
  3. Cooridantion required among various USPTO business units as well as other governmental entities: Patents, Board of Patent Appeals and Interferences, Finance
  4. Operational matters, for example, IT Updates, training, hiring personnel

Group 1 Rulemakings and Other Actions (60-Day and Under Effective Dates)

-IP Reexam Threshold (Effective September 16, 2011)

  1. Elevate standard for triggering an inter partes reexamination from substantial new question of patentatibility to reasonable likelihood that the requester will prevail with respect to at least one of the challenged claims (“reasonable likelihood”)
  2. Standard for ex parte reexamination remains as SNQ
  3. Established inter partes review to replace inter partes reexamination
  4. Revision of Standard for Granting an Inter Partes Reexamination Request, 76 Fed. Reg. 59055 (Sept. 23, 2011)
  5. Impacts 37 C.F.R. §§ 1.913, 1.915, 1.923, 1.927

-Tax Strategies in Prior Art (Effective September 16, 2011)

  1. Strategy for reducing, avoiding, or deferring tax liability – whether known or unknown at the time of the invention or patent application -shall be deemed insufficient to differentiate the claimed invention from the prior art under 35 U.S.C. §§102 and 103
  2. Exception for method, apparatus, technology, computer program product, or system used solely to prepare a tax return; or for financial management.
  3. Applies to : any patent application pending on, or filed on or after, September 16, 2011 and any patent issued on or after September 16, 2011 in a reexamination or post-issuance proceeding
  4. Memo to Examiners, Sept. 20, 2011

-Best Mode (Effective September 16, 2011)

  1. 35 U.S.C. §112, first paragraph, maintains best mode as a condition for patentability
  2. MPEP §2165 remains the same
  3. Memo to Examiners, Sept. 20, 2011

-Human Oraganism Prohibition (Effective Septmeber 16, 2011)

  1. Patent may not issue on a claim directed to or encompassing a human organism
  2. USPTO policy already captures a human organism prohibition.
  3. MPEP § 2105 remains the same
  4. Memo to Examiners, Sept. 20, 2011

-Prioritized Exam (a.k.a. Track 1)

  1. Original utility or plant patent application accorded special status for expedited examination if:  $4,800 fee, reduced by 50% for small entity; no more than 4 independent claims, 30 total claims and no multiple dependent claims; and must file application electronically
  2. Does not apply to international, design, reissue or provisional applications or in reexamination proceedings
  3. May be requested for a continuing application
  4. USPTO goal for final disposition (e.g., mailing notice of allowance, mailing final office action) is on average 12 months from date of prioritezed status
  5. Prioritized exam is terminated without a refund of prioritized exam fee if patent applicant petitions for an extension of time to file a reply or to suspend action or amends the application to exceed the calim restrictions
  6. USPTO may not accept more than 10,000 requests for prioritized exam per fiscal year
  7. Changes to Implement Track 1 of the Enhanced Examinaiton Timing Control Procedures Under the AIA, 76 Fed. Reg. 59050 (Sept. 23, 2011)
  8. Impacts 37 C.F.R. §§ 1.17 and 1.102

-15% Surcharge (Effective September 26, 2011)

  1. 15% surcharge on all fees charged or authorized under 35 U.S.C. § 41 (a), (b), and (d) (1)
  2. 15% surcharge does not apply to international stage PCT fees, certain petition fees, and enrollment fees
  3. Fee table at
  4. Notice of Availibility of Patent Fee Changes Under the Leahy-Smith America Invents Act, 76 Fed. Reg. 59115 (Sept. 23, 2011)

-Electronic Filing Incentive (Effective November 15, 2011)

  1. Established $400 additional fee, reduced by 50% for small entities, for each original application filed by non-electronic means
  2. Exception for design, plant, and provisional applications
  3. Notice of Availibility of Patent Fee Changes Under the AIA, 76 Fed. Reg. 59115 (Sept. 23, 2011)

Group 2 Rulemakings (12 month Effective Date, i.e. September 16, 2012)

  1. Inventor’s oath/declaration
  2. Third party submission of prior art for patent application
  3. Supplemental examination
  4. Citation of prior art in a patent file
  5. Priority examination for important technologies
  6. Inter partes review
  7. Post grant review
  8. Transitional program for covered business method patents

Group 3 Rulemakings and Other Actions (18-month Effective Date, i.e. March 16, 2013)

  1. First-Inventor-to-File
  2. Derivation proceedings
  3. Repeal of Statutory Invention Registration

AIA Micro-Site –

  1. One-stop shopping for info about AIA implementation
  2. Regularly updated
  3. Subscription center to receive email alerts when information is added




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