The Leahy-Smith America Invents Act was signed into law on September 16, 2011. Many important provisions are not immediately effective and, instead, are phased in over a period of eighteen months, reducing the legislation's impact in 2011.
The America Invents Act will broadly impact most areas of patent law but will do so over a period of eighteen months – not all at once. Patent litigation, patent prosecution, and funding for the United States Patent and Trademark Office (U.S.P.T.O.) will all change. The U.S.P.T.O. is directed to pursue several new initiatives as well.
Key provisions and their effective dates during the next year-and-a-half are summarized below. In the article that follows next, new post-grant procedures for challenging a patent at the U.S.P.T.O. are discussed.
Effective September 16, 2011:
Restrictions on Multi-Defendant Patent Lawsuits
Unrelated defendants can be joined in a single lawsuit only if joint and several liability exists or if the defendants engaged in the same infringing transaction/occurrence and there are common questions of fact.
Reduction of Qui Tam False Marking Actions
Besides the U.S. government, only those that can show a "competitive injury" can sue for false patent marking.
Prior Commercial Use Defense Expanded
The enforcement of patents issued on or after September 16 may be subject to a prior commercial use defense.
Less Enforcement of the Best Mode Requirement
An accused infringer can no longer challenge a patent's validity due to non-compliance with the best mode requirement.
Change in Jurisdiction for Certain Civil Proceedings
The United States District Court for the Eastern District of Virginia has jurisdiction over lawsuits brought under 35 U.S.C. § 32 (review of suspension proceedings), 35 U.S.C. § 145 (civil action to obtain a patent), 35 U.S.C. § 146 (civil action to review interference decision), 35 U.S.C. § 154(b)(4)(A) (appeal of patent term adjustment), 35 U.S.C. § 293 (nonresident patentee actions) and under 15 U.S.C. § 1071(b)(4) (civil actions against U.S.P.T.O. trademark-related decisions).
Review of Ex Parte Re-Examination Decisions
The Federal Circuit alone will review ex parte re-examination decisions.
Higher Standard for Inter Partes Re-Examination
The requesting party must show "a reasonable likelihood that the requester would prevail" on at least one of the challenged claims.
Unpatentable Subject Matter
No patents will be issued covering a tax strategy or "directed to" a human organism.
Fee Setting Authority
The U.S.P.T.O. is authorized to set all fees commensurate with its estimated costs and reduce most patent fees for "micro-entities" by 75 percent.
Effective September 26, 2011:
Fast Track Patent Prosecution
Prioritize examination by paying an extra fee.
Interim Surcharge On Patent Fees
A 15% surcharge will be added to all fees until the U.S.P.T.O. makes a specific fee adjustment.
Effective October 1, 2011:
Reserve Fund for Excess Fees
Fees collected in excess of the PTO's appropriation will be held in a reserve fund, from which Congress may make additional appropriations.
Effective November 15, 2011:
New Patent Application Filing Fee
An extra $400 fee is due if the application is not filed electronically.
Effective September 16, 2012:
Fewer Consequences for Not Presenting Evidence of Advice of Counsel at Trial
Willful infringement and intent to induce infringement are not proven by the absence of advice of counsel.
New Post-Grant Proceedings Replace Inter Partes Re-examination
A new set of post-grant proceedings replace the existing inter partes re-examinations. [See the next article for a full discussion.]
Transitional Procedure for Post-Grant Review of Business Method Patents
Entities accused of infringing a business method patent may seek post-grant review at the U.S.P.T.O.
Supplemental Review Proceedings by Inventor
An inventor may request the consideration, reconsideration, or correction of information in connection with a patent.
Assignee Can File Patent Application
An assignee can file a patent application in its own name. Third-Party Submissions of Prior Art to U.S.P.T.O.
For a fee, third parties can submit patents and printed publications for consideration by the Examiner and inclusion in the official file.
Effective March 16, 2013:
U.S. law shifts to a "first-to-file" system: the first filed application for an invention has priority over later filed applications.
Expanded Definition of Prior Art
For patent applications with an effective filing date on or after March 16, 2013, prior art includes publicly-available information and new types of information from outside the U.S.
Derivation Proceedings at the U.S.P.T.O.
A patent applicant may challenge the ownership of an earlier application derived from the applicant's work.