On September 16, 2012, the next wave of changes under the America Invents Act (AIA) took effect. Outlined below are some of the more significant changes that went into effect, with links to additional information.
Inventor's Oath and Declaration
The AIA significantly alters U.S. patent practice in broadening who can file patent applications.
Historically, only inventors could apply for patents, but as of September 16, 2012, patent applications may be filed in the name of an entity “to whom the inventor has assigned or is under an obligation to assign the invention,” or by a “person who otherwise shows sufficient proprietary interest in the matter,” provided the entity files a substitute statement to that effect.
The actual submission of the executed oath, declaration or substitute statement can now be postponed up until a notice of allowability, provided that inventorship information was set forth in an application data sheet (ADS) at the time of initial filing or within the period for filing a response to a notice of missing parts. To satisfy this requirement, the ADS must list:
- the legal name of each inventor, and
- a mailing and residence address for each inventor (citizenship is no longer required).
If the inventor were initially identified incorrectly, the U.S. Patent & Trademark Office (USPTO) will require a fee, currently proposed at $1000, to correct the inventorship any time after a first action on the merits. A patent term adjustment (PTA) penalty also will apply.
In addition, the required language on oaths/declarations has changed. Language in compliance with the AIA is required in all non-provisional patent applications with an effective filing date on or after September 16, 2012, as well as in all varieties of continuing applications, regardless of their effective filing date.
Third-Party Submission of Prior Art
Preissuance submissions of prior art provide a way for third parties to contribute information during patent examination. Such submissions are expected to improve the quality of patents: they must be timely submitted during the examination of the application in question, and they must set forth a concise description of the asserted relevance of each submitted document. To minimize unscrupulous filings, a fee is required with the submission. The submitter, however, can remain anonymous.
Two existing procedures are replaced with the procedure for preissuance submissions:
- Third-party submissions under 37 CFR§1.99, and
- Public use proceedings under 37 CFR§1.292.
Third-party protests remain available under 37 CFR §1.291, and the new rules are meant to harmonize protest and preissuance submission practice.
A request for supplemental examination can be sought by a patentee “to consider, reconsider, or correct” information believed to be relevant to a patent. This USPTO proceeding enables patent owners to expunge potential inequitable conduct, and it can be used to trigger further review of issued claims over newly discovered art, events, or information.
Supplemental examination is available in connection with any granted patent during the period in which it is enforceable (any adjusted term plus 6 years), and is intended to reduce and simplify issues involved in litigation.
There are two phases in supplemental examination. In the first phase, an inquiry is made as to whether the request presents a “substantial new question of patentability” based on the information provided in the request. If the determination indicates that at least one such question is raised, the procedure advances to a second stage, which is one of ex parte reexamination.
Post-grant review is a new procedure where a patent can be challenged on all grounds available for defending against a charge of infringement. The opportunity window for filing a request for post-grant review is short. The period for challenging a patent is only 9 months after granting of the patent. Certain business method patents are subject to post-grant review by parties who have been charged with infringement. Post-grant reviews, while theoretically possible, are only applicable to issued patents with an effective filing date after March 16, 2013.
Inter Partes Review
Inter partes review replaces inter partes reexamination. Actions to invalidate one or more claims of an issued patent, via inter partes review or the transitional program for review of certain business method patents, may now be filed. In an inter partes review, the requestor can challenge the validity of an issued patent only on prior art grounds under §102 and §103. The threshold question for granting such a request is “is there reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”