Summary of New U.S. Patent Law - Summary of Specific AIA Provisions
January 18, 2012 By Juneau Partners
New U.S. Patent Law: Leahy-Smith America Invents Act by Todd L. Juneau Juneau Partners Law Firm - September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act ("AIA"), H.R. 1249, which was passed by the U.S. House of Representatives on June 23, 2011.
The AIA makes significant changes to U.S. patent law, including the following provisions.
First to File
The new law changes the U.S. patent system from its current "first to invent" system into a "first to file" system, consistent with patent laws throughout most of the world; the U.S. "first to file" system will have a one-year "grace period" as to certain disclosures from inventors similar to the prior system.
Novelty Requirement Changes - Publications
The new law changes the Novelty requirement (Section 102) by removing the geographic and English-language distinctions among types of prior art in the current patent statute, and resetting the bar to patentability as whether the claimed invention was patented, was described in a printed publication or was otherwise disclosed to the public before the effective filing date of the claimed invention or was described in a patent with a prior filing date or a published patent application that names another inventor.
Novelty Requirement Changes - Prior Sales
The new law changes the Novelty requirement (Section 102) by removing confidential sales from being a bar to patentability-a revamping of the current "on sale bar" to patentability under which any offer for sale of an invention ready to be patented starts the clock on the one-year grace period within which a patent application on the invention must be filed.
Derivation Proceedings, instead of Interferences
The new law eliminates Interference Proceedings but creating Derivation Proceedings which require a Petition under oath setting forth with particularity, and supported by substantial evidence, bases for finding that a named inventor in an earlier application derived the invention from the inventor named in the Petitioner's application, and without authorization filed the earlier application, and that the inventions in the applications are the same or substantially the same.
Removing Best Mode Requirement
The new law deletes failure to disclose Best Mode as grounds for canceling a patent or holding a patent invalid or unenforceable-even though 35 U.S.C. § 112 will still call for patent applications to contain the Best Mode contemplated by the inventor or joint inventor.
Organizations Apply Directly
The new law allows Owners to apply for a patent directly.
Easily Correctable Inventorship
The new law continues the requirement that each inventor execute an oath or declaration that the patent application was made or was authorized to be made by him or her, and that he or she believes himself or herself to be the original inventor or an original joint inventor; but, authorizing such statements to be withdrawn, replaced or otherwise corrected at any time, and confirming that no patent shall be invalid or unenforceable based on failure to comply with the requirement for a proper oath or declaration, if remedied. This streamlines current correction of inventorship practice.
Initial 9-Month Public Opposition Proceedings
The new law provides for a new validity challenge, a Post-Grant Public Opposition Period, within nine (9) months of grant (called Inter Partes Review) in which failure to meet any of the conditions for patentability may be raised, so long as the information presented, if not rebutted, demonstrates that it is more likely than not that at least one of the claims challenged is unpatentable, such proceedings to include depositions, other discovery as necessary in the interests of justice, a set time for conclusion and the ability to terminate the proceeding via settlement.
Secondary Public Opposition Proceedings
The new law provides for another new validity challenge, a Post-Grant Opposition beyond nine (9) months from grant, but based only on patents and printed publications, and with the higher threshold that the Petitioner must show a reasonable likelihood that the Petitioner would prevail with respect to at least one of the claims challenged, with depositions, other discovery as necessary in the interest of justice, a set time for conclusion and the ability to terminate the proceeding via settlement. This replaces the current Third-Party Reexamination.
Correcting False-Marking Standing
The new law alters the false-patent-marking statute, which partially dates back to the 19th century, to eliminate the standing of the vast majority of plaintiffs. This change will apply retroactively and will vastly diminish the number of false-patent-marking cases clogging U.S. courts.
Effective Date
Some of the changes in the AIA will take effect as early as within one year of its enactment. The U.S. Patent & Trademark Office has already established a website to provide information on the legislation and to seek input and comments.
At Juneau Partners, our attorneys have been monitoring this law and the various bills since 2005 and are likewise ready for the change in practice. We welcome the chance to guide our clients, friends and colleagues through the changes that are a consequence from enactment of the AIA. If you have questions regarding this decision or how to respond in your particular circumstances, please contact us.
ABOUT THE AUTHOR: Todd L. Juneau
Todd Juneau is a registered U.S. patent attorney with over 16 years of experience. Mr. Juneau spent 10 years as a partner in a Washington, DC patent law firm representing corporations and universities before starting his own law firm in 2005 in Alexandria, Virginia, near the USPTO.
Copyright Juneau Partners
More information about Juneau Partners
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
The new law changes the U.S. patent system from its current "first to invent" system into a "first to file" system, consistent with patent laws throughout most of the world; the U.S. "first to file" system will have a one-year "grace period" as to certain disclosures from inventors similar to the prior system.
Novelty Requirement Changes - Publications
The new law changes the Novelty requirement (Section 102) by removing the geographic and English-language distinctions among types of prior art in the current patent statute, and resetting the bar to patentability as whether the claimed invention was patented, was described in a printed publication or was otherwise disclosed to the public before the effective filing date of the claimed invention or was described in a patent with a prior filing date or a published patent application that names another inventor.
Novelty Requirement Changes - Prior Sales
The new law changes the Novelty requirement (Section 102) by removing confidential sales from being a bar to patentability-a revamping of the current "on sale bar" to patentability under which any offer for sale of an invention ready to be patented starts the clock on the one-year grace period within which a patent application on the invention must be filed.
Derivation Proceedings, instead of Interferences
The new law eliminates Interference Proceedings but creating Derivation Proceedings which require a Petition under oath setting forth with particularity, and supported by substantial evidence, bases for finding that a named inventor in an earlier application derived the invention from the inventor named in the Petitioner's application, and without authorization filed the earlier application, and that the inventions in the applications are the same or substantially the same.
Removing Best Mode Requirement
The new law deletes failure to disclose Best Mode as grounds for canceling a patent or holding a patent invalid or unenforceable-even though 35 U.S.C. § 112 will still call for patent applications to contain the Best Mode contemplated by the inventor or joint inventor.
Organizations Apply Directly
The new law allows Owners to apply for a patent directly.
Easily Correctable Inventorship
The new law continues the requirement that each inventor execute an oath or declaration that the patent application was made or was authorized to be made by him or her, and that he or she believes himself or herself to be the original inventor or an original joint inventor; but, authorizing such statements to be withdrawn, replaced or otherwise corrected at any time, and confirming that no patent shall be invalid or unenforceable based on failure to comply with the requirement for a proper oath or declaration, if remedied. This streamlines current correction of inventorship practice.
Initial 9-Month Public Opposition Proceedings
The new law provides for a new validity challenge, a Post-Grant Public Opposition Period, within nine (9) months of grant (called Inter Partes Review) in which failure to meet any of the conditions for patentability may be raised, so long as the information presented, if not rebutted, demonstrates that it is more likely than not that at least one of the claims challenged is unpatentable, such proceedings to include depositions, other discovery as necessary in the interests of justice, a set time for conclusion and the ability to terminate the proceeding via settlement.
Secondary Public Opposition Proceedings
The new law provides for another new validity challenge, a Post-Grant Opposition beyond nine (9) months from grant, but based only on patents and printed publications, and with the higher threshold that the Petitioner must show a reasonable likelihood that the Petitioner would prevail with respect to at least one of the claims challenged, with depositions, other discovery as necessary in the interest of justice, a set time for conclusion and the ability to terminate the proceeding via settlement. This replaces the current Third-Party Reexamination.
Correcting False-Marking Standing
The new law alters the false-patent-marking statute, which partially dates back to the 19th century, to eliminate the standing of the vast majority of plaintiffs. This change will apply retroactively and will vastly diminish the number of false-patent-marking cases clogging U.S. courts.
Effective Date
Some of the changes in the AIA will take effect as early as within one year of its enactment. The U.S. Patent & Trademark Office has already established a website to provide information on the legislation and to seek input and comments.
At Juneau Partners, our attorneys have been monitoring this law and the various bills since 2005 and are likewise ready for the change in practice. We welcome the chance to guide our clients, friends and colleagues through the changes that are a consequence from enactment of the AIA. If you have questions regarding this decision or how to respond in your particular circumstances, please contact us.
ABOUT THE AUTHOR: Todd L. Juneau
Todd Juneau is a registered U.S. patent attorney with over 16 years of experience. Mr. Juneau spent 10 years as a partner in a Washington, DC patent law firm representing corporations and universities before starting his own law firm in 2005 in Alexandria, Virginia, near the USPTO.
Copyright Juneau Partners
More information about Juneau Partners
View all articles published by Juneau Partners
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.
