The Leahy-Smith America Invents Act of 2011 (AIA) is the "Patent
Reform" law passed by the US Senate on September 8, 2011, which made
significant changes to the US Patent Law. The act has now fully gone into
effect. The USPTO
has a web page on the implementation of the Leahy-Smith Act.
On January 14, 2012, H.R. 6621, officially titled An Act To correct and
improve certain provisions of the Leahy-Smith America Invents Act and title 35,
United States Code was signed into law by President Obama. The Act made a
number of changes to the AIA, which are noted below.
The following is a summary of most of the provisions of the law, which
are most likely to affect our clients. The law runs 152 pages, and includes many
things which are primarily of interest to the USPTO but which don't impact
inventors directly, and if you're really interested you can read
all 152 pages of the Act here in PDF form (off-site link to the Patently-O
Effective immediately on signing - September 16, 2011
Reexamination Standard: Changes
standard for inter partes reexamination from “substantial new
question of patentability" to a “reasonable likelihood that the requester
Statutory fee amounts: basically, this just puts the
USPTO fee schedule into the law. The
final fees enacted by the USPTO under its new fee-setting authority in the
AIA went into effect on March 19, 2013.
Refunds and error in payment: Allows USPTO to refund
excess claims fees for canceled claims or fees paid in error.
Micro entity discount:
A new 75% discount on some fees will be offered to "micro
entities" - small entities even smaller than Small Entities, basically
individuals who are below a certain income level and have not filed more
than a certain number of patent applications. Although this provision was
supposed to take effect on enactment, in fact the implementation of the
Micro Entity fees was delayed until March 19, 2013. For more information, see our page on Small
Entity and Micro Entity fees.
Tax strategies are within the prior art: Effectively
eliminates patents on methods of tax reduction, avoidance or deferral.
Applies to any patent application that is pending on, or filed on or after
enactment date, and to any patent that is issued on or after enactment date.
Best Mode: Failure to
state the best mode (preferred embodiment) is no longer grounds for
invalidity. Note that this does not remove the requirement in section
112 of the Patent Law to state the best mode in the application, it just
makes it impossible to challenge the validity of a patent in litigation
based on the failure to do so.
Human organism prohibition: Bans patents
"directed to or encompassing human organisms". While
commentators have raised concerns that this could be interpreted broadly to
ban patents on such things as cell lines or methods of treating people, the
USPTO position on this provision is that it does not change existing law or
long-standing USPTO policy, which already banned patenting human beings, as
Patent term extension for drugs: A very particular
section dealing with the consequences of when a product receives permission
for patent term extension purposes, if the permission is sent after 4:30
Eastern Time on a business day, or on a non business day. Sometimes referred
to in the blogosphere as the "Dog Ate My Homework Act", it is not
clear that this will have any effect at all on anything other than Medco's
U.S. Patent No. 5,196,404 covering ANGIOMAX (bivalirudin).
Marking (virtual): Allows marking a product with a
reference to a web page instead of the actual patent numbers covering the
Marking (qui tam
actions): Eliminates the ability of anyone but the government to sue a
manufacturer who marked a product with an expired patent number to get civil
penalties. A party who has suffered commercial harm by such marking can
still sue, but only for actual damages.
Civil action under 35 U.S.C. 145: In an ex parte reexamination,
a party who disagrees with a ruling of the BPAI (now to be called PTAB) can
no longer sue the USPTO in District Court to overturn the ruling.
Multiple-Defendant Lawsuits: This provision is aimed
at so-called "trolls", and is intended to make suing multiple
defendants on a single patent more expensive. It will prevent a patent owner
from suing more than one company in a single lawsuit, if the only
grounds for the suit is that they all infringed the same patent. This also
applies to prevent a court from consolidating multiple cases just because
they all involve infringement of the same patent, unless the defendants
agree, so that plaintiffs can't make an end-run around the law by bringing
lots of lawsuits and then merging them afterward. The law applies to all
lawsuits filed on or after the bill's enactment date.
Became effective ten days after enactment - September 26, 2011
Prioritized examination and fee (Track 1): Implements
the "fast track" examination program previously announced by the
USPTO, but put on hold due to budget limitations.
15% transition surcharge fees: Adds a 15% surcharge
to patent fees. Surcharge expires when USPTO revises fee under fee
provisions of the Act. A
list of fee changes may be downloaded from the USPTO, and the updated
fees are reflected in our Patent Budget Estimator and
USPTO Patent Fees pages.
Became effective sixty days after enactment - November 15, 2011
Became effective one year after enactment - September 16, 2012
Oath or Declaration: Several changes, including: (a)
elimination of the requirement that an inventor state his/her citizenship,
(b) adds new required wording; (c) allows the required statements to be made
in the assignment rather than in the oath or declaration; (d) statements for
non-signing inventors; (e) elimination of "lack of deceptive
intent" statement in reissue declarations and when changing
inventorship; (f) no longer requiring supplemental oath or declaration in
reissues. The final rules issued in August 2012 also made the following
changes: (a) removed requirement that declaration list all inventors, as
long as an ADS is filed listing all inventors; (b) removed requirement that
declaration state that person signing has reviewed and understands
application, and acknowledging duty to disclose material relevant to
patentability (although these things are still required, they just don't
need to be stated in the declaration); (c) removed requirement that
declaration acknowledge that willful false statements may jeopardize
validity of patent and statements made are true; (d) the oath or declaration
may be filed at any time up to the date of payment of the issue fee (but with a
late filing surcharge if the oath or declaration is not filed with the
application). Note: the proposed USPTO rules required filing the oath or
declaration before allowance of the application, but the January 14, 2013,
Act changed this.
Assignee as Applicant: For applications filed after
September 16, 2012, an assignee is permitted (but not required) to
apply for a patent as "applicant". The inventors must still be
named and must still file oaths or declarations, or the assignee will have
to petition to accept the application without the oaths or declarations, as
in current practice. The inventor(s) names will still be used for
application and patent identification purposes, however.
Third Party Preissuance
Submissions: A new section
122(e) is added:
Third parties are allowed to submit
certain types of information (publications, patents, published applications,
but not public use or sale or improper inventorship, to which section
Submissions must be made before the earlier of (i)
allowance or (ii) the later of six months after the publication of the
application or the first rejection.
Submissions are made through a web-based
submission system which can be accessed through the normal USPTO e-filing
- There are several items that must be included for a compliant
- Form PTO/SB/429 (or equivalent document list), identifying the
publications, or portions of publications, being submitted [NOTE:
use form PTO/SB/429 for paper submissions only; a completed form
PTO/SB/429 will be automatically generated for electronic
- A concise description of the asserted relevance of each item
identified in the document list;
- A legible copy of each item identified in the document list, other
than U.S. patents and U.S. patent application publications;
- An English language translation of any non-English language item
identified in the document list;
- Statements by the party making the submission that: The party is
not an individual who has a duty to disclose information with
respect to the application under § 1.56; and the submission
complies with the requirements of 35 U.S.C. 122(e) and § 1.290;
- A fee of $180 for every ten documents listed or fraction thereof,
unless the fee exemption applies to the submission.
- A third party is exempt from paying a fee for a submission of
three or fewer documents, provided it is the party’s first such
submission and the party files a “first and only” statement..
- Patents granted on applications with a priority date after March 15,
2013, (i.e. "first to invent" patents) are subject to
"Post Grant Review" during the nine-month period following
- Petition must establish that at least one claim is "more likely
than not" unpatentable.
- Must be filed before a third party initiates a declaratory judgment
action to invalidate the patent.
- Can raise any grounds that can be used to challenge the validity of a
patent claim - not just patents and publications or other prior art, but
also public use, sale or other public disclosure (section 102 novelty or
section 103 obviousness), or lack of written description or enablement
(section 112), or statutory subject matter (section 101).
- Estoppel standard is “raised
or reasonably could have raised” before the USPTO and the courts.
- The “inter partes reexamination” procedure is replaced with
“Inter Partes Review” (IPR)
- IPR can be requested at any time during the life of patent, after the later of 9 months from grant
of the patent or termination of
post-grant review (PGR), if any.
Note: As originally passed, this left a nine-month gap for patents
issued under the "first to invent" rules during which they
could not be challenged, since pre-March 16, 2013, patents are not
subject to Post-Grant Review (PGR). The Act signed on January 14,
2013, amended the AIA to eliminate the nine-month gap for such
- IPR is started by a third party filing a petition. The patent owner
may respond to the petition. The threshold showing is a “reasonable
likelihood” that the petitioner will prevail. If the threshold is met,
then IPR will be scheduled by PTAB.
- The basis for the IPR is limited to patents or printed
- IPR is not available if filed more than 1 year after service of
infringement complaint or if petitioner previously filed Declaratory
Judgement action alleging
- Provides for
intervening rights with respect to any new or amended claims.
- Estoppel standard is “raised
or reasonably could have raised” before the USPTO and the courts.
may limit number of proceedings in first 4 years.
Applies to all patents,
A patent owner can file a Request for Supplemental
Examination, supplying information not limited to patents and
Supplemental Examination must be carried out within three
If information supplied raises at least one "substantial new
question of patentability", Director is required to conduct a
supplemental-examination-ordered ex parte reexamination.
becomes aware of fraud either during supplemental examination or
reexamination based on supplemental examination, the Director will refer the
matter to the Attorney General.
Citing art in an issued patent's file under section
to allow filing written statements of the patent owner into a patent file,
if the statements were filed in proceedings
before a Federal court or the Office taking a position on the scope of a
patent claim. Provides for submission of additional information with such
statements and limits the use of such statements (not to be considered for
any purpose other than to determine the proper meaning of a patent claim).
Priority examination for "important
technologies": Will allow the Director to provide for priority
examination for applications for "products, processes, or technologies
that are important to the national economy or national
competitiveness". Specifically says that this may be done "without
recovering the aggregate extra cost of such prioritization". Watch for
enabling regulations for definitions of these terms.
Transitional Program for review of certain business
method patents: Eight-year transitional term, during which a petitioner
who has been charged with or sued for infringement may bring post-grant
review proceeding to determine validity of certain business method patents.
Patent must claim a method or corresponding apparatus for performing data
processing operations utilized in the practice, administration, or
management of a financial product or service, but not patents for
Became effective eighteen months after enactment - March
- First Inventor to
File: The most significant change in the Act is from
the "first to invent" standard for who gets a patent in a conflict
between two applicants, to "first inventor to file".
Until this change, if there was any conflict between two inventors, the
patent was granted to the first person to invent (conceive plus reduce to
practice) in an "interference"
proceeding. How "first to invent" worked involved complex sets of
rules to decide who was actually first, especially if one inventor conceived
first and reduced to practice later, and so on. "First to Invent"
also affected what constituted "prior art"
- in case of a publication or other prior art, an inventor could "swear
behind" the prior art by showing he had invented before the
The change to "first inventor to file" eliminates the need to
inquire as to date of invention, although the Act as passed does not go all
the way to a pure "first to file" system, where nothing matters but
when the application was filed. The applicant still needs to be an inventor -
just anyone cannot get a patent simply by filing first - and the patent goes
to the application with the earliest "effective date". The effective
date for an application will be its actual filing date or, if the inventor
published less than a year before the filing date, the date of
- Transition Period - Subject Matter filed before March 16, 2013,
applications filed after March 16, 2013
Patent applications (and the patents which result from them) which were filed under
"First to Invent" remain under that standard. "First Inventor
to File" will apply to any application with a claim "having
an effective date as defined in section 100(i)" on or after March 16,
2013, or (ii) having a specific reference under
sections 120, 121, or 365(c) to an application having such a claim (i.e. a
continuation, continuation in part, divisional or National Stage of PCT), and
to patents based on such applications.
This means that the old rules continue to apply to
applications filed before March 16, 2013, and to continuations and divisionals
of those applications which are filed after March 16th, assuming that they are
"correct" continuations or divisionals - that is, nothing was added
to the disclosure compared to the parent application.
The new rules will
apply to any application that ever contains a claim that claims subject
matter which was filed on or after March 16, 2013.
For continuations-in-part (CIPs) it would appear that one would have to
look at each claim and see if any claim claims subject matter which has an effective date after
March 16, 2013. Under the USPTO's interpretation of the rules, once the CIP is
filed with at least one claim with an effective date after March 16th, the
entire application would be under the First Inventor To File system, even if
that claim is later canceled. This would probably mean that most CIPs filed
after March 16, 2013, would be under the new rules, since CIPs are, by
definition, filed to add new matter.
It remains unclear if one adds new matter to a pre-March 16th application,
but keeps exactly the same claims, whether this would throw the application
under the new rules or not - the claims are the same as originally filed, but if
they read on the added matter it seems likely that at some point a court will
decide that they now claim this new matter even if they are word-for-word the
same. It would seem safest to assume this is true.
So, for the foreseeable future,
we will be working under a dual system, some applications being judged under
"first to invent", and others judged under "first to
- Foreign applications are now "prior art" as of their
foreign filing date, rather than as of publication.
- PCT applications are "prior art" as of their International
Filing Date, regardless of language (previously, they had to be
published in English).
- Public use or sale and "otherwise available": Section 102(a)(1) is amended to
add that prior art, in addition to patents, publications, public use or
sale, includes the invention being "otherwise available to the
public". This section is also amended to remove the words
"in this country" after "publicly used or on sale", so
that public use or sale anywhere in the world would prevent getting a
patent, not just US use or sale as before.
- One-year Grace Period: Section 102(b) is amended so that the
one-year "grace period"
applies only to the inventor's own publications or to publication by
someone who obtained it from the inventor. There is no "grace
period" for publications by others.
- Effective Date vs Filing Date: Publications by the inventor, if
less than a year before the application filing date, are now the
"effective date" for prior art purposes - but, according to the
USPTO's interpretation of the law, only as to exactly what is in the
publication. If anything at all is added to the patent application
relative to the inventor's disclosure, the disclosure would not be the
effective filing date (so that prior art which arises between the
publication and filing will be prior art to the application), and for
anything in the application which is changed from the publication, the
publication would be prior art for obviousness purposes. In essence, this
eliminates any benefit from the "grace period", and it is best
to treat the US under "first to file" as if we were an
"absolute novelty" country like most of the rest of the world,
where any publication will defeat patentability. The take-home lesson? File
a patent application before you publicly disclose your invention!
- Section 102 Novelty changes: In addition to the above, the
following sections are eliminated as no longer necessary under "first
inventor to file": 102(c) (abandonment), 102(d) (first patented in a
foreign country), parts of 102(f) (other than impact on derivation and
improper inventorship), 102(g) (priority of inventorship, including impact
on 37 CFR 1.131 priority of invention affidavits).
- Section 103 Obviousness: amended such that obviousness is to be
judged as of the effective date of the application, rather than as of the
date of invention.
- Section 104: This section, dealing with requirements for
inventions made abroad, is repealed.
- Derivation Proceedings: These replace interferences as inter-inventor proceedings in the USPTO
before the renamed Patent Trial and Appeal Board (PTAB),
formerly the Board of Patent Appeals and Interferences (BPAI). Derivation
proceedings will be used to determine if an inventor in an application
having an earlier effective date in fact derived his invention from the
inventor with the application having a later effective date. Unlike
interferences, the date of invention would be irrelevant, and the only
issue would be if the earlier filer derived from the later.
- Statutory Invention Registrations: The SIR
program, which was seldom used anyway, has been eliminated.
- Satellite Offices: There are now four satellite patent offices -
Detroit, Denver, Dallas-Fort Worth, and San Jose, California. Detroit has
been operating since mid-2012.
- "Prior commercial
use" is added as a defense to infringement for all technologies, if the
use was at least one year before effective date of application. There is an
for patents owned by universities or their tech transfer offices.
- Advice of Counsel: Provides that failure of an infringer to obtain
advice of counsel cannot be used to prove willfulness or induced
- Misc. Studies: The USPTO is directed to perform some studies, and
to review fees.
You can get a summary
of the patent provisions from the USPTO, or if you really care, you can read
all 152 pages of the Act here in PDF form (off-site link to the Patently-O
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