The Leahy-Smith America Invents Act (AIA) implements the most significant reform to US patent law since 1952. There are changes in the way that applicants and inventors are treated, procedural changes and changes in the way that patent applications are examined as well as significant revisions to the actions available to third parties when seeking to challenge ownership or validity of patent rights.
significant changes coming in for applications filed from 16 March 2013 (herein "post-AIA" applications):
- shift from the current “first-to-invent” patent system in the US to a “first inventor-to-file” system
- related new provisions changing the way in which prior art is defined
- interferences replaced by derivation proceedings
- availability of post grant review ('opposition')
further changes already in force including:
- ability to file in the name of the assignee in the US
- new procedures for third parties to challenge both pending US patent applications and issued US patents
- new supplemental examination procedure
Effective date/transitional period
The provisions coming into force on 16 March 2013 apply to applications that contain, or have contained at any time, a claim that has an effective date of 16 March 2013 or later ("post-AIA" applications). Therefore, PCT applications filed on or after 16 March 2013, but claiming priority to an application filed before 16 March 2013, will be examined under the new law when they enter the US national phase if at least one claim is not entitled to priority. This applies even if the claims are later amended to leave them all with a valid priority claim.
Moreover, once an application (or a family of applications) transitions to post-AIA it is not possible to go back. So all future divisionals, continuations and so on will be examined under post-AIA provisions. This approach has most significance in relation to the new prior art provisions, but the same approach applies to other areas where the law differs, notably the availability of the post grant review and derivation procedures.
The current law will continue to apply to applications in which all the claims have an effective filing date of before 16 March 2013 ("pre-AIA" applications), which means that both systems will be running in parallel for the next 20 years. That makes for a lengthy transitional period.
It is anticipated that some applicants will file parallel applications with pre-AIA and post-AIA claim sets. This is relatively simple to do, for example by filing two almost identical priority claiming applications and invalidating the priority claim in one, or by filing two priority applications before and after the 16 March 2013 changeover date. Such applicants would be able to make use of the different options available to them from the two sets of laws, at an increased cost compared to having only a single patent application.
Applications filed on or after 16 March 2013 that claim priority to an application filed before 16 March 2013 must include a "priority flag" to identify if any subject matter has been added to the application on or after 16 March 2013. This new procedural requirement applies separately to the claims and description. New subject matter anywhere in the claims will lead to post-AIA provisions applying. New subject matter in the description may not - pre-AIA provisions will apply unless a later amendment means the claims lose the right to priority. Failure to submit a priority flag within the time limit will result in a waived priority claim and post-AIA provisions will hence apply automatically. The time limit for filing this priority flag is the later of:
- four months from the filing date of the later-filed application,
- four months after entry into the US national phase,
- sixteen months from the filing date of the priority application, or
- the date that a first claim having an effective filing date on or after 16 March 2013 is presented in the application.
Post-AIA: first-inventor-to-file/grace period
The new prior art provisions have the effect of moving the US to a “first-inventor-to-file” system instead of the current "first to invent" system. A 12-month grace period will still be available for disclosures made by the inventor or a joint inventor, or for disclosures made by someone who had obtained the disclosed subject matter directly or indirectly from the inventor or a joint inventor. However, it will no longer be possible to swear behind earlier third party disclosures or earlier-filed patent applications by demonstrating an earlier date of invention.
Under the new law, the 12-month grace period (for post-AIA filings) will run backwards from the priority date/earliest filing date irrespective of where the earlier application (e.g. priority application) has been filed. This means that a priority application no longer needs to have been filed in the US for the grace period to be calculated backwards from the priority date, rather than the filing date. A US provisional therefore becomes less attractive for non-US applicants since a local filing can have the same effect.
Post-AIA: other changes to prior art provisions
Removal of geographical and language restrictions
Under the new law (i.e. for post-AIA applications), earlier public prior use or earlier sales do not need to have taken place in the US to represent prior art in the US. This expands the available 'pool' of prior art and brings it into line with other jurisdictions, like the EPO.
The effective date of earlier-filed, later-published US applications (similar to Art. 54(3) 'novelty only' prior art in Europe) will be their priority date, irrespective of where the priority application was filed. This also applies to PCT applications designating the US, which also no longer need to have been published in English to represent prior art. Notably, PCT applications do not need to enter the US national phase – they only need to designate the US. This means that more prior art will be available under the new law and in fact also means that this prior art can have a greater effect in the US than elsewhere. This is because, as with the current US law, earlier-filed, later-published applications will be available for the assessment of both novelty and obviousness.
Common ownership of earlier-filed, later published patent applications
Earlier-filed, later-published patent applications may be removed as prior art for post-AIA applications if they are owned by the same person at the effective filing date, or if they are subject to an obligation of assignment to the same person at the effective filing date. This is more generous than the old law, which required the transfer of ownership to occur prior to the date the invention was made. Common ownership includes collaborations under joint research agreements, provided certain conditions are met. It may now be possible for companies to buy up known cases that might present an obstacle prior to filing new applications. However this pre-supposes knowledge of the earlier (unpublished) applications.
Post-AIA: derivation proceedings
For new applications filed from 16 March 2013 "derivation proceedings" replace interference proceedings, although interferences will continue to be available for applications being examined under the current law. Derivation proceedings allow an applicant to prevent earlier-filed third party applications acting as prior art for their own application if the subject matter of the 3rd party’s application or patent was derived from the applicant for the later application. So you must show that the later applicant was the first to conceive the invention and that they communicated it to the 3rd party, for example under conditions of confidence.
There is a relatively short time limit. Derivation proceedings need to be brought within a year of first publication of the third party’s patent application/patent. Grounds for derivation proceedings can be created by the alleged true inventor/an appropriate assignee copying and refiling a published application by the alleged non-entitled party.
A successful derivation proceeding will result in a declaration from the USPTO that the inventor named in the earlier filed application derived the invention from the inventor of the later filed application without authorisation. The prior art effect of the earlier case against the later is removed, and presumably the earlier case would become invalid to the extent that it was unallowably derived from the other inventors work.
Post-AIA: post-grant review
AIA introduces a new inter-partes procedure broadly similar to the EPO opposition. In common with the EPO opposition it must be requested within 9 months of patent grant. Post-grant review will available for all patents granted from post-AIA applications, but is available now for all business method patents. The process should be quicker than the EPO - the intention is for a final decision to be made within a year. It will however be more expensive. The official fee is USD 35,000 and attorney costs are expected to be relatively high as well. The post-grant review process is however still expected to be cheaper than a challenge to validity in the courts.
An issued patent can be challenged by a third party on grounds including: novelty, obviousness, enablement, written description, definiteness and probably patent eligibility. The prior art is not limited to publications and, for example, can include prior use. The request will be considered by the new Patent Trial and Appeal Board (which replaces the current Board of Appeals). There will be a fairly high threshold for initiation of a post-grant review: the requester must demonstrate upfront that it is “more likely than not” that at least one of the challenged claims is unpatentable. Post-grant review cannot be requested anonymously: all parties in interest must be identified and there is an estoppel effect in subsequent litigation.
After the period for post-grant review has expired it is still possible to challenge validity with a patent office procedure using the new inter-partes review procedure, which is discussed below. However, the prior art available via this procedure is restricted to published documents.
Already in force: applicant/assignee changes
Since 16 September 2012 it has been possible to file US patent applications in the name of the assignee, rather than in the name of the inventor(s). The inventor(s) still need to be named on filing but a formal Assignment does not need to exist. An “obligation” to assign will suffice with the Assignment to be sorted later.
This makes things simpler for applicants that use US provisional filings since there could be a single global assignment confirming ownership (without the need for subsequent recordal in the US). However, as noted above, US provisional filings may become less useful following the changes in prior art and grace period provisions.
For PCT applications designating the US, it is no longer necessary to name the inventor as applicant for the US only; the assignee can be named as applicant for all designated states. Once again this simplifies matters for applicants - there will be fewer documents required on US national phase entry. An inventor declaration is still necessary, but can be filed at any time until a notice of allowance issues. It would, however, still be advisable to file this earlier rather than later.
Already in force: pre-issuance third party submissions
These may be filed by third parties against any pending patent applications and this procedure is available for all pending applications, pre- and post-AIA. Unlike EPO third party observations, which do not have a time limit (aside from when grant is planned) the US third party observations must be filed by the later of (i) 6 months from publication, or (ii) issuance of the first rejection (or notice of allowance if no rejections are made). The submissions must be based on patents, published applications and printed publications only. It will be noted that this is a narrower list than prior art available for post grant review. There is an official fee of $180 per 10 documents and no fee if three or fewer documents are submitted. Anonymous filing is possible.
Already in force: inter partes review
This new procedure replaces inter partes re-examination and is available now as a way to challenge validity for any issued US patent. It can be currently be requested after the later of:
- nine months after patent grant,
- the date of termination of post-grant review (if instituted), or
- within one year of being sued.
There is a proposal to adjust the timing for pre-AIA cases to allow inter partes review to commence from grant, thus eliminating a 9 month 'dead zone' where no challenge to validity is possible (since for the majority of pre-AIA cases the post-grant review will not be available). As with the third party submissions, inter partes review is available on narrower grounds than post-grant review and can be requested based on patents, published applications and printed publications only.
Like the new post-grant review, it cannot be requested anonymously; all parties in interest must be identified and there is an estoppel effect in subsequent litigation. Also like post-grant review, the request will be considered by the new Patent Trial and Appeal Board and final determination should be given one year after initiation. Again, there is a high threshold for initiation and the requester must demonstrate that there is a “reasonable likelihood” that they will prevail with respect to at least one challenged claim. The official fee for requesting inter partes review is high - approximately $30,000.
Already in force: supplemental examination
This new procedure may allow a patent proprietor to address potential inequitable conduct by providing for supplemental examination of claims based on information that presents a substantial new question of patentability. In effect the patent holder can prompt re-examination when they are aware of prior art that has an impact on the patentability of granted claims. There is no need for the patent holder to address whether there was any intent to deceive and the patent cannot then be held unenforceable for inequitable conduct in subsequent litigation.
Each request is limited to 12 items of information and the official fees are around USD 5,000 for the initial request and USD 16,000 for re-examination (both must be paid upfront). This procedure is available now for any issued US patents.
Other notable changes
It is now possible to claim microentity status in the US, which provides for a reduction in official fees of 75%. Microentities are small entities that have filed less than 5 earlier cases, meet an income threshold (approx. USD 150,000 maximum) and are not linked to a company with a larger income than the threshold.
Available now for pending direct filed US applications upon payment of a one-time official fee of USD 4,800. This should result in allowance or final rejection of the application within 12 months. Applicants cannot use the prioritized procedure for PCT national phases but it is available for continuations of PCT national phase applications. Currently limited to a maximum of 10,000 applications per year, across the USPTO.
Further proposed changes
There is a proposal for curtailment of term for pre-GATT applications. Apparently there are around 200 of these (pending since before 8 June 1995), which would get the old-old law term of 17 years from grant. A new bill proposes making this 20 years from filing, as for post-GATT applications. If this passes there may well be a rush to get any pre-GATT applications granted before it comes into effect.
The same bill also includes the proposal to remove the 'dead zone' for pre-AIA cases mentioned above. This is more of a correction to an unanticipated loophole in the original AIA than a change as such. It is not expected to be contested.
Action to take
As it is likely that more prior art will be available under the new law then if new patent applications are going to be ready to file it would make sense to file before 16 March 2013, if possible, to try to take advantage of the current law. If a priority application is pending and a PCT is going to be filed with updates then filing a PCT application before 16 March 2013, or filing a second priority application before 16 March 2013, will ensure that the new subject matter has a pre-AIA effective date. This should mean that the application is examined under the current law when it enters the US national phase. Note that if no changes are to be made to a priority claiming PCT or US filing then there is no reason to bring the filing date forward, since pre-AIA law will apply provided that all claims have a priority date before 16 March 2013.
After 16 March 2013 there would seem to no longer be any particular benefit in filing US provisionals as priority applications. This is because a foreign (e.g. UK) priority application should provide the same benefits as a US provisional application under the new law.
A “priority flag” will be required for PCT applications filed on or after 16 March 2013 and claiming priority from an application filed before 16 March 2013. It will therefore become important to keep a note of the subject matter added to the description and the claims.