The America Invents Act (also referred to as the “Patent Reform Act of 2011”) was enacted September 16, 2011. To help you understand the timing of when various provisions of the Act take place, we’ve reviewed the 37 proposed changes to patent law and created a listing by date, below. (Note: we haven’t included many of the technical or relatively unimportant changes—for example, renaming the Detroit Patent Library—but you can read the full list of changes here.). After each section, we have included a cross-reference to the relevant sections from the Act.
Changes That Takes Place Immediately (Upon Enactment)
- Tougher to obtain inter partes re-exam. It will be harder to obtain patent re-examination. (The Director can only authorize a re-exam if “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”) And there will be no more federal court review of USPTO re-examinations. (Sec. 6).
- Easier for prior users to defend. If you’re sued for infringement but you were commercially using the patented technology more than one year before the filing date of the claimed invention, you have a defense against a claim that you infringed (although that defense doesn’t invalidate the patent). The Act includes a definition of “commercial use.” (Sec. 5).
- Goodbye to tax strategy patents. The USPTO will stop granting patents for strategies for reducing, avoiding, or deferring tax liability.
- Goodbye best mode defense. Accused patent infringers often use the “best mode defense” in which they argue that the patent holder failed to disclose the best mode of carrying out the invention. The best mode defense will no longer be available in cases filed afterenactment. (Sec. 15);
- Hello virtual website marking. Virtual marking—the process of using a publicly accessible website to provide a link between a patented invention and its patent number—shall be considered as sufficiently providing public notice for that patent. This change will apply to all cases filed including cases pending at the time of enactment. (Sec. 16).
- Harder to go after false markers. It has become common practice for parties to bring a lawsuit claiming (or making a counter claim) that an invention is falsely marked, especially if the mark exists on copies of the invention after the patent has expired. The Act provides that privately filed false marking claims (those claims not brought by the government) will require proof of competitive injury. Marking with the number of a patent that covered that product but has expired will no longer be considered false marking. This provision will apply to all cases filed including cases pending at the time of enactment. (Sec. 16(b)).
- New rules when joining defendants. Joinder of unrelated accused infringers will be limited in actions commenced on and after enactment (Sec. 19(d)), and
- No patenting humans. Issuance of patent claims directed to or encompassing a human organism will be barred as of enactment. (Sec. 33).
Learn How to Qualify for a Patent.
10 Days after Enactment (September 26, 2011)
- Higher fees. Patent filers will pay a 15% surcharge on all patent fees. (Sec. 11).
- Paying for being prioritized. There’s a $4,800 fee for filing a prioritized application. Small entities pay only $2,400. (Sec. 11(h)).
60 Days after Enactment (November 16, 2011)
- The Luddite penalty. A new $400 fee ($200 for small entities) must be paid by those applicants who do not file utility patent applications electronically. (Sec. 10(b)).
12 months after enactment (September 16, 2012)
- The Inventor’s Oath/Assignment. The Act modifies certain requirements regarding the oath or declaration required of an inventor. If an inventor has assigned (or is obligated to assign) an invention, the assignee can file the application for the patent. (Sec. 4).
- Narrows post-grant reviews. The Act provides that inter-partes hearings after a patent has been issued are now limited to challenges for novelty and nonobviousness—that is to issues relating to Sections 102 and 103 of the patent law. Such claims can only be based on prior art consisting of patents and printed publications and must be filed 9 months after the patent issued. This provision also establishes many additional technical and procedural rules for post-grant reviews, generally making it more difficult to bring post-grant reviews. For example, it prohibits a post-grant review and inter partes review if the party filing has filed a related civil action before filing the petition. (Sec. 6).
- Changes to Patent Trial and Appeal Board. The Act sets forth new rules about the Board and provides for appeals to the Court of Appeals for the Federal Circuit (CAFC) from certain Board decisions. (Sec. 7)
- Submitting “Gotcha” documentation. Prior to the USPTO’s granting of a patent, the Act allows a third party to submit relevant publications for the patent examiner to consider (commonly referred to as preissuance submissions). (Sec. 8).
- Patent owner’s right to supplemental exam. The Act establishes a system of supplemental examinations for a patent owner “to consider, reconsider, and correct information believed to be relevant to the patent.” (Sec. 12)
- A new look at business patents. The Act requires the Director to establish a transitional post-grant review proceeding to consider the validity of business-method patents. (Sec. 18)
Find out Who Owns a Patent.
18 months after enactment (March 16, 2013)
- First to file; not first to invent. Patents filed 18 months after enactment will be subject to new first-to-file and prior art rules, effectively ending centuries of first-to-invent rules. The current one-year on sale bar—that permits sale or disclosure of the claimed invention less than one year before filing—is terminated, although the Act establishes a limited one-year grace period if the inventor (or anyone who obtained the subject matter from the inventor) made certain disclosures of the claimed invention. The novelty and nonobviousness sections of the patent law (Sections 102 and 103) are amended and existing provisions relating to inventions made abroad and statutory invention registration are terminated. (Sec. 3).
- New rules for fighting earlier effective patent filing. The Act permits a patent owner to bring a “derivation hearing” at the USPTO (replacing interference proceedings) against another patent owner claiming to have the same invention and who has an earlier effective filing date. The derivation hearing must be filed within a 1-year period beginning on the date of the first publication of a claim in the earlier filed application. Alternatively, the owner of a patent may sue the owner of another patent that claims the same invention and has an earlier effective filing date. These lawsuits can only be brought if the invention claiming priority was derived directly from the person seeking relief. (Sec. 3).
Learn How to File a Patent Application.