The America Invents Act: Changes to U.S. Patent Laws
by Timothy G. Ackermann
Last September’s amendments to the patent laws—commonly known as the “America Invents Act” or “AIA”—touch upon many areas, including how to get a patent, what the fees are, defenses in patent lawsuits and U.S. Patent and Trademark Office (PTO) review of already-issued patents. Here are some highlights:
First, the best-known provisions are those changing how the patent-filing and -granting process works. For applications filed after March 16, 2013, patents will be granted upon a “first-to-file” system. Rather than focusing on when something was invented, the “effective filing date” will be the actual filing date, or the date of the earliest application (e.g. an earlier U.S. or foreign application) to which it may claim priority. This will make filing early more important.
The AIA also changes “prior art”—that is, what the PTO or a court can use to conclude an invention is not patentable because it was not new or would have been obvious. Prior art, for post-March 2013 applications, has been broadened to include anything “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public” before the effective filing date. Under the pre-amendment provisions—which will apply for many years to applications and patents filed before that date—certain acts or things are not prior art unless they occur or exist in the United States.
Other amendments include fee-setting authority for the PTO (for recovering its “aggregate estimated costs”), a fee for prioritized examination and penalty for paper applications, the opening of a satellite PTO office in Detroit and the deeming of tax strategies as being within the prior art, making them not patentable unless combined with other technology.
Next, the AIA altered a number of substantive and other provisions concerning patent litigation. Perhaps the two highest profile changes concern areas seeing public criticism in recent years. Plaintiffs must now have suffered a “competitive injury” to seek damages for false patent marking, and only the government can seek a penalty for each article marked falsely. The statute also now permits virtual marking—via a link to a website—and eliminates the risk of retaining the number of a now-expired patent. Plaintiffs can also no longer join a number of accused infringers in the same case solely because each is alleged to have infringed the patent. Rather, they must meet a joinder test relating to an infringing act that concerns “the same accused product or process.”
Other litigation-related changes include the immediate elimination of the “best mode” requirement as a defense (many countries do not require disclosure of the inventor’s best mode). In contrast, for patents issued on or after September 16, 2011, a defense that the defendant used the claimed invention at least a year before the effective filing date was expanded from business methods to any process or thing used in a commercial or manufacturing process. And, finally, not getting, or presenting evidence of, the advice of counsel cannot be used to prove an infringement was willful.
The AIA has broadened a company’s options in seeking PTO review of issued patents, or in aiding PTO rejection of a published application. A non-patent owner participating when the PTO “reexamines” the patent—giving it a chance to narrow the patent rights, or eliminate them entirely and possibly avoid litigation—is not new. But as of September 2012, that option (now “Inter Partes Review”) will include discovery. That procedure will no longer, however, apply to newly-issued patents (less than nine months), which will fall under a new procedure (Post Grant Review). The basis for attacking the patent claims as unpatentable in Post Grant Review will not be limited to patents or printed articles, but will also include prior sales or public use of the invention. Post Grant Review, however, will only apply to post-March 2013 applications. And, when submitting prior art relevant to a published patent application, one may now give a “concise description” of why that art is relevant.
For the patent owner, September 2012 will bring a broad new procedure (Supplemental Examination) “to consider, reconsider, or correct information believed to be relevant to the patent.” The principal effect is to permit the patent owner to eliminate the risk of inequitable conduct (which renders the patent unenforceable) by permitting the PTO to review that information. But Supplemental Examination is not limited to such consideration, or even the type of prior art to be considered.
Finally, three points to recall. First, the PTO will be writing many sets of rules to implement the amended statutes. Second, while some amendments are immediately effective, many have effective dates in September 2012 or later. And third, some pre-amendment provisions will remain effective for some time—think 20 years—for patents filed before the 2012 or 2013 effective dates.
Tim Ackermann practices patent, trademark and copyright law at The Ackermann Law Firm. He was Co-Chair of the Publications Committee of the Dallas Bar Association from 2009-2011. He can be contacted at firstname.lastname@example.org.