Brown & Michaels

The America Invents Act of 2011

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 site).  

Effective immediately on signing - September 16, 2011

Became effective ten days after enactment - September 26, 2011

Became effective sixty days after enactment - November 15, 2011

Became effective one year after enactment - September 16, 2012

Became effective eighteen months after enactment - March 15, 2013

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 publication. 

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 publication. 

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 file". 

Other Provisions 

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 site).   


Last updated: Tue, 13 Oct 2020