America Invents Act (AIA)

If you are currently considering converting provisional patent applications to non-provisional applications or filing continuation-in-part applications, you may want to consider doing so before March 16, 2013.

The U.S. patent system is changing from a First-to-Invent system to a First-Inventor-to-File system.  On March 16, 2013, the First-Inventor-to-File provisions of the America Invents Act (“the new system”) will go into effect for all patent applications filed on or after that date.  The new system includes an expansion of the scope of what is considered to be prior art, which may make it more difficult to avoid some prior art.  For example, under the current law, only sales and public uses which occur in the United States act as prior art.  Under the new system, sales and public uses anywhere in the world can act as prior art.  

Additionally, the current law allows applicants to antedate prior art (such as publications, public uses, or sales) occurring within one year of the first U.S. filing date.  This means applicants can remove prior art by demonstrating that their invention was conceived before the cited reference.  The new system limits this one year “grace period” to public disclosures made by the inventor within one year prior to the first “effective filing date” (whether in the U.S. or elsewhere) and provides that such a disclosure prevents any subsequent third-party disclosures of the same subject matter from becoming prior art. 

Further, applications filed after March 16, 2013, that claim a priority date before March 16, 2013, may or may not be examined under the new system rules.  Final rules have not yet been published by the USPTO; however, the proposed rules provided that if even a single claim in the application is subsequently found to contain “new matter” that was not present in the application filed prior to March 16, 2013, then all the claims of the application will be examined under the new system rules.  Any further filings of continuations, divisionals, or continuations-in-part would then also be subject to the new system rules.  However, as the final rules will not be published until mid-February at the earliest, there is still uncertainty as to how the USPTO will apply the new law.  

USPTO Fee Changes

Another provision of the AIA is that the USPTO has been give fee setting authority.  On March 19, 2013, the USPTO is implementing a new fee structure, and the overall cost of a patent through the life of the patent will increase approximately 25%.  For a large entity, fees for a patent from filing through third-stage maintenance (with no requests for continued examination) will increase from $12,190 to $15,160.  For a small entity, the same fees will increase from $5,945 to $7,580.   

One change of note is an increase in the utility patent filing fees from $1,260 to $1,600 for large entities (with small entities retaining a 50% reduction in these amounts).  Additionally, the fees for requests for continued examination (RCEs) will increase and vary depending on the number of RCEs previously filed. The current $930 RCE fee will increase to $1,200 for a first RCE and $1,700 for each subsequent RCE (small entities will also continue to receive a 50 % reduction in these amounts).

Another important change is the increase in maintenance fees as shown in the following table:

Click here to view table.

However, a new micro-entity status has been added for which fees are typically half that required for small entities.  To qualify for micro-entity status an entity must meet the narrow requirements of 35 U.S.C. 123(a) and (d).

Because of these changes, you may want to consider paying any pending fees before the March 19, 2013, effective date unless you qualify as a micro-entity.  For a detailed schedule of the fee changes click on the following link: