AIA Provisions Effective September 16, 2012

September 6, 2012 | Intellectual Property News

Certain aspects of the America Invents Act are effective beginning September 16, 2012. The key provisions include:

Best Mode. The failure to disclose the best mode will no longer be a basis, in patent validity or infringement proceedings, on which any claim of a patent may be canceled or held invalid or otherwise unenforceable. Technically, however, the best mode still must be disclosed in the application.

Derivation Proceedings. In a derivation proceeding an applicant for patent files a petition stating with particularity the basis for finding that an inventor named in an earlier application derived the claimed invention from the petitioner. The petition must be filed within 1 year of the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Inter Partes Reexamination. This process is no longer available after September 16, 2012.

Inter Partes Review. A party may seek an Inter Partes Review of a patent within 9 months of issuance (or reissuance), or by the date of termination of a post grant review. The “inter partes” nature of the process means that the requester and the patent owner both participate in the process, and both can submit arguments related to patent validity. The review is limited to questions of novelty and obviousness, and carries a hefty fee of $27,200 in order to challenge up to 20 claims. The request must demonstrate a reasonable likelihood that the claims are invalid. During the proceedings, the parties may submit evidence and engage in limited discovery.

Post Grant Review. A post grant review is a request that the patent office reconsider the validity of the patent; unlike the inter partes review, the requesting party does not participate after making the request. This request must be made within 9 months after the patent grant (or reissue), and can be based on grounds of novelty, obviousness, written description, enablement, and indefiniteness. As with all of the new review processes, it is expensive: $35,800 to review up to 20 claims.

Prioritized Examination. A patent applicant can request expedited review of the application in which the Patent Office seeks to complete the process within one year. This request currently costs $4,800 for a large entity, and is limited to 10,000 such requests at the USPTO per year.

Inventor’s Declaration. The declaration is still required, but is trimmed down. Under the new rule, the inventor is no longer required to (i) state that he/she is the first inventor of the claimed invention; (ii) state that the application filing is made without deceptive intent; or (iii) provide his/her country of citizenship. In addition, the declaration can be filed much later (up to a point just prior to a notice of allowance, though late charges still apply), and the declaration language can be contained in the assignment.

Business Method Patent Challenge. For a limited time through September 16, 2020, business method patents may be challenged in a special form of review that will be substantially the same as the post grant review process but which allows the submission of a wider array of evidence.

Preissuance Submissions. Anyone may submit prior art of interest to the patent office that may affect the patentability of an application, so long as it is submitted by the required deadlines, which generally extend until six months after publication, the issuance of a notice of allowance, or an office action rejecting the claims.

Supplemental Examination. A patent owner may request supplemental examination to reconsider or correct aspects of the patent. The scope is much the same as a post grant review, and a key difference is that this is requested by the patent owner rather than a third party.  The patent office will consider up to 12 items of information, which are not limited to patents and printed publications. The filing fee is again quite large:  $21,260 for a large entity, though $16,120 of that is refundable if a substantial new question of patentability is found not to exist.