America Invents Act

 The full text of the act, comprising many different provisions each with different effective dates, can be found at the following link: Leahy-Smith America Invents Act. At least the next 20 years both the new and the old systems have to be taken into account.

A table of effective dates on the USPTO site gives an overview of the effective dates of each provision in the Act. A selection of the provisions are shortly summarized below:

Provisions effective as of September 16, 2011

• Prior user defense. A prior user defense to infringement is broadened.
• Best mode. The failure to disclose the best mode is no longer a ground for invalidating a patent or for rendering it unenforceable.
• Human organism. Any claim that is “directed to or encompasses” a human organism is deemed unpatentable.

Provisions effective as of September 26, 2011

• A 15% increase on most patent office fees. The following links provide an overview of the fees before (current) and after (revised) September 26, 2011: Current USPTO Fee Schedule; Revised USPTO Fee Schedule
• Prioritized examination. The opportunity to speed up examination and complete prosecution within on year offered on or after September 26, 2011 for an additional (over the regular fees for filing the application) $4800 for large entities and $2400 for small entities.

Provisions effective as of September 16, 2012

• Third party submission. Before September 16, 2012 a third party is allowed to submit at max. 10 submissions (patents or publications) at any time when the application is pending.  After September 16, 2012 third parties may submit any allegedly relevant documents accompanied by argumentation, explanation or other commentary, giving the opportunity to attack pending claims, within a timeframe of six months from publication or until the issuance of a first Office Action on the merits, whichever is later.
• Post grand review. On or after September 16, 2012 a post grant review, which will be closely alike the Opposition Procedures known in Europe, may be requested within nine months of grant or reissue. Any ground of invalidity can be considered. The standard used to determine whether to grant the request for post grand review will be “whether it is more likely than not that at least one challenged claim is unpatentable” or “whether the petition raises a novel or unsettled legal question that is important to other patents or applications.” The review process is in principle to be completed within one year.
• Inter partes review. May be requested after grant, reissue or Post grant review. The standard used to determine whether to grant the request for inter partes review will be “whether there is a reasonable likelihood that the petitioner would prevail on at least one claim”.

Provisions effective as of March 16, 2013

• First-inventor-to file . This system gives priority to the first inventor to file a patent application and will replace the current first-to-invent system. In addition, this system redefines what is to be considered as prior art. This provision will apply to any application which has or ever had during prosecution a claim relating to subject-matter with an earliest effective filing date after March 16, 2013. The current practice of filing US provisional applications to secure an early US filing date, will be rendered obsolete as from March 16, 2013.

Author: Thea van der Wijk