Summary of new patent bill (America Invents Act)

2011-09-16

From my friend Charles Cella at the excellent patent firm GTC Law Group. (email from them published with permission)

REVISIONS TO UNITED STATES PATENT LAW
As you may be aware, the Senate passed the America Invents Act (AIA) on September 8, 2011. This act will create sweeping changes in US patent law once signed by President Obama, who has stated his intention to sign this bill.

The AIA will create significant changes to the law, and we wanted to take a moment to inform you of some of its most important provisions.

First to File System:

The United States will move to a first-to-file system instead of a first-to-invent system. This will put the US in closer alignment with rest of the world in determining priority of invention based on the earliest date a patent application was filed with a patent office. There is a limited one-year grace period related to public disclosures made by the inventor.

Further, the long-standing procedure to prove a prior invention, i.e., interference proceedings, will be replaced with “derivation proceedings” to determine whether an inventor of a first-filed patent application derived the claimed subject matter without authorization from an inventor named in a laterfiled application.

Post Grant Review:

There will be a nine-month window for challenging a patent on any ground. Review may be granted upon a showing that it is more likely than not that at least one of the challenged claims is unpatentable. After the window of post-grant review has passed, patents may be challenged on the basis of patents or printed publications only. Under a new transitional post-grant review process that applies to certain business-method patents, only parties who have been sued for infringement or otherwise charged with infringement (the recipient of a cease-and-desist letter, for example), may petition for review.

Patent Related Provisions:

Patents will not be granted to any strategy for reducing, avoiding, or deferring tax liability, or to claims covering human organisms. There will also be a 15% surcharge added to all patent-related fees and patent-maintenance fees, beginning 10 days after the date of the new law’s enactment.

Prioritized Examination:

The USPTO will be authorized to proceed with a program for a fee-based prioritized examination, which may be a useful tool for clients who are interested in an expedited examination for particular patent applications. This will cover applications for original utility or plant patents, and will take effect ten days after the date of the enactment of this Act. Initially, only 10,000 applications will be accepted in any fiscal year. Accordingly, space in this program may be limited, and it may be best to apply for this program earlier in the fiscal year.

My (non-expert) analysis:  seems to me this doesn’t fix any of the very serious problems in our current patent system.  First-to-file seems to reward companies with the resources to file many patents.  The post grant review seems to imply you should to monitor every patent issued and challenge them within 9 months. I don’t see how any organization without massive resources could do this.

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