On September 16, 2011, the 112th Congress enacted the Leahy-Smith America Invents Act (AIA).1 This law represents the most significant change to the U.S. patent system since 1952. The AIA switches the U.S. patent system from a “first-to-invent” to a “first-inventor-to-file” system, eliminates interference proceedings and develops post-grant opposition. The central provisions of the AIA will go into effect on March 16, 2013.

Due to the scope of the proposed changes, experts and courts alike will surely wrestle for years with the mechanics of the implementation of these changes and how inventors can best protect their inventions. In an effort to summarize the impact of this significant legislation, below are the top 10 changes under the AIA:  

1. Assignees Can File on Behalf of Inventors

The AIA permits assignees to apply for patents on behalf of an inventor. The inventor no longer has to state that he or she has “reviewed and understands” the application or “acknowledge” the duty of disclosure. At the time of filing, a substitute statement may be used in lieu of an oath/declaration to record ownership. This greatly simplifies the process for most large clients with multiple inventors.

2. Filing of the Oath/Declaration Can Be Postponed

The filing of the oath/declaration may be postponed until the application is in condition for allowance, as long as an application data sheet is provided before the start of the examination. Because these documents are often time sensitive, it may be wiser to file them along with the initial application.

3. Relevant Documents Can Now Be Submitted by Third Parties

The new law permits any third party to submit to the United States Patent and Trademark Office (USPTO) any patent, published patent application or printed publication of “potential relevance” during the pendency of examination of a patent application.

4. Binding Statements Can Be Entered in Patent Wrappers

The law is revised to permit any person to submit for entry into the file of an issued patent any written statements that the patent owner made in court, or at the USPTO, about the claim scope for that patent.

5. Start of the Post-Grant Review (PGR) Process

Parties who challenge issued patents may do so as long as the patent has a priority date later than March 15, 2013. The PGR must be filed within nine months of issue to invalidate the patent on any ground that can be used to challenge the validity of a patent claim.

6. Start of the Inter Partes Review (IPR) Process

This process is now available to invalidate a patent based upon any patent or other printed publication that predates and otherwise casts a shadow over the issued grant. The IPR replaces what was once known as the inter partes reexamination.

7. PGR of “Covered” Business Method Patents

For existing patents without any priority date, the law allows the challenge of a “covered” business method patent, namely claims to a method or corresponding apparatus for performing data processing or other operations used in the practice, administration or management of a financial product or service. The PGR must still be filed within nine months of issue and may help declare any portion of the patent invalid on any grounds that can be used to challenge the validity of a patent claim.

8. Start of the Supplemental Examination Process

This tool is now available to a patent owner who identifies items in the patent file to be corrected and is granted ex parte reexamination, as long as a substantial new question of patentability is demonstrated to the USPTO’s satisfaction.

9. Advice of Counsel

The failure to obtain or produce an opinion of a patent counsel was once used to prove the intent to induce others to infringe or willful infringement. The AIA codifies Knorr-Bremse v. Dana Corp. and In re Seagate, so the advice of counsel may no longer be used to prove willfulness or intent to induce.

10. Statute of Limitations on Disciplinary Proceedings

USPTO disciplinary proceedings must begin no later than 10 years after the misconduct occurred, or one year after the misconduct was made known to a USPTO officer or employee.