CHAPTER 1 Overview of the AIA Chapter Contents 1.01 Generally 1.02 History of the AIA 1.03 Effective Dates for the AIA Enactments 1.01 Generally The America Invents Act (AIA) was signed into law in 2011, 1 and aspects of it came into effect over the next year and a half to result in the most comprehensive changes to patent law since 1836, when patent examination was created in the United States. 2 Among the changes instituted under the AIA are that the AIA brought into effect first-inventor-to-file patent system rules for patent applications having an effective filing date on or after March 16, 2013, and the patents issuing from them, while leaving in place for as long as applicable the original patent system rules of first-to-invent for applications and patents having an effective filing date of March 15, 2013 or earlier. 3 The AIA provides for more global approaches for examination and litigation, for example, in determining prior art, such as removing the requirement that a priori public use occur in the United States and removing the geographical restrictions to determining the prior art effect of U.S. patents and patent applications that have priority to an effective filing date of a foreign-filed application. 4 The AIA renamed the appeals board of the United States Patent and Trademark Office the Patent Trial and 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011). 2 Matal, A Guide to the Legislative History of the America Invents Act, Part I of II, 21 Fed. Cir. B. J. 435 (2012), available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2064740. 3 Pub. L. No. 112-29, 125 Stat. 284, 285-286 (2011). 4 Pub. L. No. 112-29, 125 Stat. 284, 286 (2011). 11
1.01 The America Invents Act Appeal Board to reflect its role in the multiple new post-issuance proceedings provided by the AIA, 5 such as post-grant Review, 6 inter partes review, 7 and supplemental examination, 8 and the retirement of other proceedings, such as interferences. 9 Existing and future civil court actions were affected by changes to the types of cases to be brought, 10 the parties who could be joined, 11 and the location where appeals from the Board can be brought. 12 Under the AIA and the federal rules adopted to be consistent with the AIA and to provide for the changes to examination practice under the AIA, large and small changes occurred in the day-to-day practice of filing and prosecuting patent applications, such as new procedures for responding to rejections of claims for prior art determinations, and in the forms filed in applications, such as oaths and declarations, application data sheets and assignments. Almost all aspects of patent practice were affected by the Act, with one of the major changes being the shift in U.S. law from a first-to-invent patent rule system for determining a patent s priority date. The AIA provides, for patent applications having an effective filing date on or after March 16, 2013, and patents issued from such applications, a first-inventor-to file patent rule system 13 that is similar to, but differs in a significant manner from, the rest of the world s patent rule system of first-to file. The United States patent system still provides a grace period, which allows an inventor to publicly disclose his or her invention without loss of patent rights if a patent application disclosing the invention is filed within one year. 14 With the wide-ranging changes to patent law brought about by the AIA, it is important to note the dates when changes became effective and which patent system rule, first-to-invent or first-inventor-to-file, applies to the patent application or patent under consideration or in litigation. Changes brought about by the AIA to patent practice have differing effective dates, some as prescribed by statute and a number by actual outcomes of the statute. For example, a good number of the changes brought about by the AIA 5 Pub. L. No. 112-29, 125 Stat. 284, 290 (2011). 6 Pub. L. No. 112-29, 125 Stat. 284, 305-311 (2011). 7 Pub. L. No. 112-29, 125 Stat. 284, 299-305 (2011). 8 Pub. L. No. 112-29, 125 Stat. 284, 325-327 (2011). 9 Pub. L. No. 112-29, 125 Stat. 284, 290 (2011), elimination of references to interferences; Pub. L. No. 112-29, 125 Stat. 284, 291 (2011), civil action in case of derivation proceedings. 10 Pub. L. No. 112-29, 125 Stat. 284, 329 (2011), false marking challenges, derivations. 11 Pub. L. No. 112-29, 125 Stat. 284, 332 (2011). 12 Pub. L. No. 112-29, 125 Stat. 284, 316 (2011). 13 Pub. L. No. 112-29, 125 Stat. 284, 285-286 (2011). 14 at 286. 12
Overview 1.01 are limited to patent applications with claims having an effective filing date on or after after March 16, 2013, and the patents issuing from such applications, such as the determination of priority date of a patent application and the effect of prior art on such patent applications and patents, and the rules under the AIA are applied to such filed applications in examination procedures immediately after March 16, 2013. Concurrently with examination procedures proceeding for the applications with claims having an effective filing date on or after March 16, 2013, patent applications having claims with an effective filing date before that date, or patent applications filed after that date that can claim a right of priority and benefit of a filing date before March 16, 2013, are governed by the priority and prior art determinations that were in effect on March 15, 2013, the first-to-invent patent rules system. 15 This means that for existing and growing patent portfolios, a portion of the patents and patent applications of the portfolio may be governed by the first-to-invent patent system rules, and for patent applications filed after March 16, 2013, some of the patent applications and the patents issuing from them in the portfolio may be governed by the first-inventor-to-file patent system rules, and some may be governed by rules from both systems. Other changes to patent practice under the AIA are applied to most patent applications in existence on or after a particular date, for example, prioritized examination for nonprovisional utility and plant patents came into effect on September 26, 2011, ten days after the enactment of the AIA. 16 Other changes that are effective under the statute do not have a practical application at the effective date. For example, post-grant review proceedings, which provide for a post-grant challenge to an issued patent, and which were prescribed in the AIA, 17 required federal rulemaking to establish the procedures at the United States Patent and Trademark Office, 18 and took effect one year after the enactment date, September 16, 2012. 19 They will not be available in actual practice until patents begin issuing from patent applications having claims with an effective filing date on or after March 16, 2013, which at the earliest would be in 2014, because the rules are applicable only to patents issuing from applications that have an actual filing date, or a claim to priority or benefit of a filing date, that is 15 Pub. L. No. 112-29, 125 Stat. 284, 293 (2011). 16 Pub. L. No. 112-29, 125 Stat. 284, 395 (2011). 17 Pub. L. No. 112-29, 125 Stat. 284, 306-311 (2011). 18 The United States Patent and Trademark Office may be referred to herein as the USPTO or the Office, or may be included when referring to the Director of the USPTO. 19 Pub. L. No. 112-29, 125 Stat. 284, 311 (2011). 13
1.02 The America Invents Act on or after March 16, 2013. 20 Additionally, some prior patent practices have been repealed completely, such as statutory invention registrations and, in time, inter partes reexamination. The changes to patent practice are daunting for many, and the United States Patent and Trademark Office (USPTO) has established two ways to obtain additional information regarding the changes to patent rules and regulations under the AIA: a help line (1-855-HELPAIA) and an e-mail address (HelpAIA@uspto.gov). Extensive information about the AIA is available online at the USPTO Web site. 21 1.02 History of the AIA The AIA was signed into law on September 16, 2011, but its creation and the impetus to make the changes accomplished in AIA started years before. According to the findings of the National Research Council of the National Academies, 22 changes in patent policies made in the 1980s and 1990s that strengthened patent rights and extended patent rights to new technologies led to the increased acquisition of patents, and to the increased assertion and enforcement of patent rights. 23 In the 1970s the patent system was perceived as being weak, ineffective, and unable to respond to changes in technologies, hobbled by antitrust policies and of little value to patent holders 24 Policy changes in the 1980s included extending patent protection to new subject matter in the first steps to allow patents for inventions for biotechnology 25 and for computer software, 26 and later, providing patent protection for methods of doing business. 27 In 1982, the Court of Appeals for the Federal Circuit was established by Congress, 28 which among other duties, was to decide appeals from federal district courts and the Board of Patent Appeals and Interferences. 29 As a result of this centralization of appeals, there was an increase in the findings of validity of patents and of infringement of patents. 30 Other actions that appear to have 20 21 Available at http://www.uspto.gov/aia_implementation/index.jsp. 22 A Patent System for the 21st Century, National Research Council of the National Academies, 2004, available at http://www.nap.edu/catalog.php?record_id=10976. 23 at 10. 24 at 21. 25 Diamond v. Chakrabarty, 447 U.S. 303, 100 S. Ct. 2204, 65 L.Ed 3d, 144 (1980). 26 Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). 27 State St. Bank & Trust Co. v. Signature Fin. Group, 149 F. 3d 1368 (Fed. Cir. 1998). 28 A Patent System for the 21st Century, at 23. 29 30 14
Overview 1.02 strengthened the rights of patent holders were increased damage awards in infringement actions, 31 statutory protection for process patents, 32 legislation for the acquisition of exclusive rights for inventions made with federal funding, 33 for generic drug protection and extension of patent term for patent inventions subject to regulatory review, 34 and accession to international treaties, such as the General Agreement on Tariffs and Trade (GATT). 35 Starting in the 1980s, there was a relaxation of antitrust limitations on the use of patents 36 and an increase in the number of patents issued, 37 the number of patent litigation actions, 38 and the number of legal practitioners specializing in intellectual property law. 39 The increase in patenting activity affected the U.S. Patent and Trademark Office in its ability to examine patents in a timely manner and to retain and train an examining corps. 40 In 2002, the USPTO released the first version of the 21st Century Strategic Plan, 41 and there have been several iterations of the 21st Century Strategic Plan. 42 One of the goals of the 21st Century Strategic Plan was to institute multi-track examination, where applicants could control the timing in examination procedures, 43 and this goal was met in part in 2011 by the AIA with the establishment of the fees for prioritized examination, which allowed for prioritized examination to begin ten days after enactment of the AIA. 44 Funding for the USPTO was noted as being critical to accomplishing goals of the 21st Century Strategic Plan, 45 and for the USPTO to have access to the user fees collected each year. 46 Funding 31 32 The 1988 Process Patent Amendments Act, codified at 35 U.S.C. 271(g). 33 The Bayh-Dole Patent and Trademark Amendments Act of 1980, codified at 35 U.S.C. 200 et. seq. 34 The 1984 Drug Price Competition and Patent Restoration (Hatch-Waxman) Act, Pub. L. No. 98-417, 98 Stat. 1585 (1994), codified at 15 U.S.C. 68b-68c, 70b (1994), 21 U.S.C. 301 note, 355, 360cc (1994); 28 U.S.C. 2201 (1994); 35 U.S.C. 156, 271, 282 (1994). 35 A Patent System at 23. 36 at 24. 37 38 at 32. 39 40 at 104. 41 Available at http://www.uspto.gov/web/offices/com/strat21/index.htm. 42 U.S. Patent and Trademark Office Interim Adjustments to the 21st Century Strategic Plan, 2006, available at http://www.uspto.gov/web/offices/ac/comp/budg/iad-strat.pdf. 43 U.S. Patent and Trademark Office Interim Adjustments to the 21st Century Strategic Plan, 2006, at 2. 44 Pub. L. No. 112-29, 125 Stat. 284, 325 (2011). 45 at 2. 46 See Strategic Plan for the 21st Century, at http://www.uspto.gov/web/offices/com/ strat21/index.htm. 15
1.02 The America Invents Act for the USPTO, particularly a revolving fund that gives the USPTO direct access to its user fees was first recommended in 1966, 47 remains a controversial issue and was not included in the AIA. 48 As an accommodation to removal of the revolving fund from the AIA, the House Appropriations Committee pledged that future bills would appropriate all estimated fee income to the USPTO, 49 and the first appropriations bill enacted after the AIA did so. 50 In 2004, an influential paper, A Patent System for the 21st Century, 51 was released with recommendations for changes to the then-current U.S. patent practice. The paper provided seven recommendations, of which most were addressed in some manner in the provisions of the AIA. One recommendation was for the patent system to remain open to new technologies without the need for enactment of statutes directed to particular technologies 52 for example, because statutes would be difficult to change should they become redundant. 53 In line with this reasoning, the AIA provides for a Transitional Program for Covered Business Method Patents, 54 that addresses concerns related to patents for a particular technology, but the law sunsets after eight years. 55 Another recommendation was institute procedures for third parties to challenge issued patents before administrative law judges as an alternative to civil litigation to resolve patent validity. 56 The AIA provided several post-issuance procedures to address patent validity, including Inter Partes Review, 57 Post Grant Review, 58 and the Transitional Program for Covered Business Method Patents. 59 The paper also recommended modifying or removing subjective elements of patent litigation that required determining a party s state of mind at the time of infringement or invention. 60 As examples of these state of mind determinations, the 47 Matal, Joe, A Guide to the Legislative History of the America Invents Act, Part II of II, 21 Fed. Cir. B. J., 435, 645 (2012), available at http://papers.ssrn.com/sol3/papers.cfm?a bstract_id=2088887. 48 at 646. 49 50 51 A Patent System for the 21st Century, National Research Council of the National Academies, 2004, available at http://www.nap.edu/catalog.php?record_id=10976. 52 at 5. 53 54 Pub. L. No. 112-29, 125 Stat. 284, 329-331 (2011). 55 at 331. 56 A Patent System, at 6. 57 Pub. L. No. 112-29, 125 Stat. 284, 299-305 (2011). 58 Pub. L. No. 112-29, 125 Stat. 284, 305-311 (2011). 59 Pub. L. No. 112-29, 125 Stat. 284, 329-331 (2011). 16 60 A Patent System, at 7.
Overview 1.02 recommendations particularly pointed to the requirement for the presence in the patent application of the best mode known to the inventor for practicing the invention, and determinations of whether an inventor or patent attorney engaged in inequitable conduct by intentionally failing to disclose known prior art to the examiner during examination. 61 The AIA specifically removes the requirement of a best mode disclosure in a patent application as a basis for invalidity of the patent, 62 and also provides for a Supplemental Examination procedure for the patent owner to address issues of disclosure of prior art during examination. 63 Another recommendation in the paper was to harmonize U.S. patent examining procedures and standards with other industrial countries, particularly those of Europe and Japan. 64 Suggested differences that needed reconciling between the U.S. and others were the patent application priority standards of first-to-invent with first-to-file, the grace period for filing an application after publication, the best mode requirement of U.S. applications, and the U.S. exception to publication after eighteen months. 65 The AIA addressed these in establishing the first-inventor-to-file patent application priority rules for patent applications with an effective filing date of March 16, 2013 or later; 66 and removing the best mode requirement as basis for a finding of invalidity or for a claim of priority or benefit of an earlier filing date, 67 though a best mode description continues to be required by statute. 68 The exception to publication was not addressed by the AIA. The paper was in favor of retaining the grace period and encouraging other countries to adopt a one year grace period for filing a patent application after publication. 69 With a similar intent, the AIA maintains a one year grace period for filing a patent application after disclosure of the invention by an inventor or one who obtained the information from the inventor. 70 There were many legislative stops and starts in the path to pass the legislation that is the AIA. It is suggested that the Congress, particularly Representative Lamar Smith who is named in the Leahy-Smith America Invents Act, initiated the 61 62 Pub. L. No. 112-29, 125 Stat. 284, 328 (2011). 63 Pub. L. No. 112-29, 125 Stat. 284, 325-327 (2011). 64 A Patent System, at 8. 65 66 Pub. L. No. 112-29, 125 Stat. 284, 285-286 (2011). 67 Pub. L. No. 112-29, 125 Stat. 284, 328 (2011). 68 35 U.S.C. 112(a) was not amended to remove the statutory requirement for disclosing a best mode. 69 A Patent System, at 127. 70 Pub. L. No. 112-29, 125 Stat. 284, 286 (2011). 17
1.03 The America Invents Act legislation in 2005 that eventually became the AIA. 71 That bill, which was not enacted, had many aspects of the final AIA, including provisions for first-to-file patent priority; prior art determinations; derivation proceedings; post grant review; changing the inventor s oath, the assignee s powers, the inequitable conduct doctrine, repealing deceptive intent restrictions; and allowing third parties to submit prior art. 72 Senate bills were introduced in 2006 but little other than hearings occurred, 73 and in both Houses in 2007-2008, 74 where the bills included controversial standards for damage awards in patent litigation, 75 but no law was enacted. 76 In the 111th Congress of 2009-2010, a patent reform bill was again introduced in the Senate and the House, but neither House passed the legislation. In the 112th Congress of 2011-2012, on March 8, 2011 the Senate adopted Senate Bill 23, which no longer contained provisions directed to the award of damages and other controversial aspects, 77 and on June 23, 2011, the House adopted House Bill 1249, 78 which differed from the Senate Bill in several significant ways. 79 The House and Senate bill sponsors agreed to a compromise on the differences between the bills without the need for a formal conference between the two Houses. 80 The compromise was enacted by a House floor managers amendment, 81 and that bill was voted on by the Senate on September 8, 2011. 82 President Obama signed the bill into law on September 16, 2011, 83 and the largest change to U.S. patent law in over seventy-five years was begun. 1.03 Effective Dates for the AIA Enactments The AIA was signed into law on September 16, 2011, but differing sections of the AIA became effective on different dates. The chart below shows the effective dates for provisions of the AIA. 84 71 Matal at p. 438. See Matal for more in-depth discussion of the particulars of the proffered legislation between 2005 and 2011. 72 73 at 439. 18 74 75 at 440. 76 at 441. 77 at 445. 78 79 at 446. 80 81 at 447. 82 83 84 Dates as reported by the USPTO, see America Invents Act: Effective Dates, available at http://www.uspto.gov/aia_implementation/aia-effective-dates.pdf.
Overview 1.03 Effective Date Title AIA Section Applies to or is established Inter Partes Reexamination transition period began 6 Requests to inter partes reexamination filed on or after 9/16/2011 until 9/16/2012 Any patent application Tax Strategies within prior art 14 pending on, filed on or after 9/16/2011 and to any patent issued on or after 9/16/2011 Best mode 15 Proceedings commenced on or after 9/16/2011 Virtual and false marking 16 Any case pending on, commenced on or after 9/16/2011 September 16, 2011 Venue Change from DDC to EDVA 9 Any case commenced on or after 9/16/2011 Any case in which the time OED Statute of Limitations 3 period for instituting a proceeding had not lapsed before 9/16/2011 Pro Bono Program 32 Established on 9/16/2011 Human organism prohibition 33 Any patent application pending on, filed on or after 9/16/2011 Fee Setting Authority 10 Micro Entity 10 Established, but rulemaking must occur before new fees are effective Established, but rulemaking made new fees effective 3/19/2013 19
1.03 The America Invents Act Effective Date Title AIA Section Applies to or is established September 26, 2011 Prioritized Examination 11 Requests filed on 9/26/2011 15% surcharge on fees 11 Established a surcharge for particular fees October 1, 2011 Reserve Fund Established 22 Established 10/1/2011 November 15, 2011 Electronic Filing Incentive 10 Established 11/15/2011 January 14, 2012 January 16, 2012 Int l Protection for Small Business Report Prior User Rights Report 31 Issued January 2012 3 Issued January 2012 March 16, 2012 Diversity of Applicants Program 29 Methodology for study established June 16, 2012 Genetic Testing Report 27 Delayed Inter Partes Review 6 Any patent issued before, on or after 9/16/2012 September 16, 2012 Post Grant Review 6 Applies to patent with an effective filing date on or after March 16, 2013 Transitional Program for Covered Business Method Patents 18 Applies to covered business method patents issued before, on or after 9/16/2012 for 8 years until 9/16/2020 20
Overview 1.03 Not Issued Effective Date Title AIA Section Applies to or is established Supplemental Examination 12 Applies to any patent issued before, on or after 9/16/2012 Citation of prior art in a patent file 6 Applies to any patent issued before, on or after 9/16/2012 3rd party submission of prior art in a patent application 8 Applies to any patent application filed before, on or after 9/16/2012 September 16, 2012 Inventor s Oath/Declaration 4 Any patent application filed on or after 9/16/2012 (Continued) Priority Examination for important technologies 25 Statutory amendment to 35 U.S.C. 2(b)(2) Patent Ombudsman for Small Businesses Program Effects of First-inventor-to file on Small Business Report Patent Litigation Report 28 Established 3 Not Issued 34 Not Issued First-Inventor-to File 3 Applies to patents and patent applications having an effective filing date on or after March 16, 2013 March 16, 2013 Derivation proceedings 3 Applies to patents and patent applications having an effective filing date on or after March 16, 2013 Repeal of Statutory Invention Registration 3 Applies to any SIR filed on or after 3/16/2013 21
1.03 The America Invents Act Effective Date Title AIA Section Applies to or is established September 16, 2013 Report on Misconduct Before the Office 3 To be established September 14, 2014 Open Satellite Offices 23 Detroit Office opened July, 2012, and other office sites identified September 16, 2014 Virtual Marking Report 16 To be established September 30, 2014 Satellite Offices Report 23 To be established September 16, 2015 AIA Implementation Report 26 To be established 22