The New U.S. Patent Law - Pros and Cons
A brief summary of some positive and negative consequences of the America Invents Act. America Invents Act: Pros and Cons - by Todd Juneau
Some of the benefits of the new AIA include the following.
(1) The AIA allows accelerated examination merely by paying a surcharge.
(2) The AIA continues the trend of moving validity issues out of the federal courts and into the USPTO by allowing a 9-month post-grant public opposition period for applications filed after Sept. 16, 2012, or March 16, 2013 for some applications.
(3) The AIA allows owners to file applications directly.
(4) The AIA allows commonly owned patents and applications to not be prior art against each other.
(5) The AIA strengthens patent validity by stating that “failure to disclose the best mode” and “failure to have correct inventorship” may not be used to invalidate a patent.
(6) The AIA allows third parties to submit prior art against pending applications if submitted within 6 months after publication or before the first Examination Report.
(7) The AIA allows patent owners more ways to correct patents after grant. Expands post-grant patent reexamination for consideration of prior art to now include a second proceeding called supplemental examination which would allow the USPTO to consider any information that raises a substantial new question of validity.
(8) The AIA provides a prior user defense against a charge of infringement for an infringer in all lawsuits after Sept. 16, 2011 who can show commercial use more than a year before the filing date.
(9) The AIA provides inventors with a 75% discount on USPTO fees if they have no more than 4 patents and a gross income less than 3 times median household income.
Some of the negative consequences of the AIA include the follow.
(1) Under the AIA, patent related fees will increase 15%.
(2) Under the AIA, a $400 surcharge will be added for documents not filed electronically.
(3) The AIA establishes a specific post-grant review program for business method patents involving financial products so the USPTO can determine if these “bank patents” are legitimate.
(4) After enactment of the AIA, clients can expect legal fees will increase due to added difficulty to provide legal advice under two legal regimes.
ABOUT THE AUTHOR: Todd L. Juneau
Todd Juneau is a registered U.S. patent attorney having over 16 years of experience representing corporations and universities in the U.S. and throughout the world.
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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.