The America Invents Act (AIA) has resulted in a major reform of the US patent system and it introduces some fairly significant changes.
The main features of the new system were reviewed in our previous newsletter. A number of these changes have now come into force or are due to do so in the coming year.
Many of the changes are very positive, especially for European practitioners. Not only will the new law be more similar to our own "first-to-file" system, but there will be practical benefits. For example, there will be no need for us to file US provisional applications once the new prior art provisions come into force, as explained in more detail below. In addition, it is now possible to file US patent applications in the name of the assignee, rather than needing to file in the name of the inventor(s).
This article summarises the key changes and what they mean for us in practice.
CHANGES ALREADY IN FORCE
Filing in the name of the assignee
It is now no longer necessary to file US patent applications in the name of the inventor(s). Instead, US patent applications may now be filed in the name of the assignee(s), and this applies to US provisional and non-provisional applications and also to PCT applications designating the US. However, the inventors do still need to be named on filing. It is also worth noting that the assignment does not need to be in place on filing; an "obligation" to assign is sufficient.
As a result of this change, it is no longer necessary to name the inventor as applicant for the US only for PCT applications designating the US, as the assignee can now be named as applicant for all designated states.
Under the new law, the statements that need to appear on the inventor declaration for US and PCT(US) applications filed on or after 16 September 2012 have changed, and the new statements that must now appear on the inventor declaration are:
- The application was made or authorised to be made by the person executing the declaration;
- The individual believes himself to be the original inventor or an original joint inventor of a claimed invention in the application; and
- An acknowledgement of the penalties clause referring to fine or imprisonment of not more than five years, or both.
These new-style declarations must also be submitted for continuation applications filed on or after 16 September 2012.
If the inventor declaration is not present on filing, the USPTO will no longer issue a Notice of Missing Parts setting a two month time limit to file the declaration and it is now possible to file an inventor declaration at any time up until the issue fee is paid.
Pre-issuance 3rd party submissions
The scope for filing 3rd party observations against pending US applications has been expanded under the new law, and the ability to make such pre-issuance 3rd party submissions is available now for all pending applications. However, the time frame for making these submissions is still fairly limited, and they 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). Therefore, it will be important to monitor for publication of competitors’ applications if you wish to make use of this procedure.
A useful feature of this procedure is that pre-issuance 3rd party submissions may be filed anonymously, which is in contrast to most of the post-grant procedures for challenging 3rd parties’ patents.
The submissions must be based on patents, published applications and printed publications only, and there is an official fee of $180 per 10 documents (and no fee if three or fewer documents are submitted).
This new procedure may allow a patent holder to address possible inequitable conduct, by providing for supplemental examination of claims based on information that presents a substantial new question of patentability. 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 substantial: ~$5000 for the initial request and ~$16000 for re-examination (both of which must be paid upfront).
This new procedure is available now for any issued US patents.
It is now possible to claim ‘microentity’ status in the US, which provides for a 75% reduction in official fees.
In general terms, a microentity is an entity that:
- Qualifies as a small entity;
- Has been named on fewer than 5 earlier-filed applications (excluding foreign and provisional applications);
- Has a gross income that does not exceed three times the most recent median household income in the US (i.e. a gross income of less than approximately $150,000); and
- Is not contractually obliged to an entity having a gross income exceeding three times the most recent median household income in the US.
Microentity status can be established at any time by a simple written assertion of entitlement to microentity status. This written assertion can be made by a US attorney or agent on your behalf.
There is still a requirement to disclose the ‘best mode’ of carrying out your invention. However, failure to do so is no longer available as a defence to infringement.
Prioritized examination can be requested for pending applications upon payment of a one-time official fee of $4800, and is intended to result in allowance or final rejection of the application within 12 months. The number of applications receiving prioritized examination is currently limited to 10,000 per year.
Post-grant validity challenges
Under the new law, there are expanded mechanisms for challenging the validity of issued third party patents.
Post-grant review has some similarities with EPO opposition procedure. For example, it must be requested within 9 months of patent grant.
This new procedure allows an issued third party patent to be challenged on a wide range of grounds, including novelty, obviousness, enablement, written description, definiteness and probably patent eligibility. The request will be considered by the new Patent Trial and Appeal Board.
The costs associated with requesting post-grant review are fairly high, with an official fee of ~$35,000. However, this should still be much cheaper than litigation. The process is intended to be fairly quick and a final determination should be given one year after initiation.
Post-grant review is available for patents granted from applications examined under the new law (which comes into force on 16 March 2013 – see below), but is already available for business method patents.
Inter partes review
This new procedure replaces inter partes re-examination and is available now for any issued US patent. It can be requested after the later of:
- 9 months after patent grant (although this 9-month time period does not apply to patents issued under the old law and inter partes review can be requested less than 9 months after grant for these patents);
- the date of termination of post-grant review (if instituted);
- within 1 year of being sued.
It is available on narrower grounds than post-grant review and can be requested based on patents, published applications and printed publications only.
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. The official fee for requesting inter partes review is also fairly high – approximately $30,000.
CHANGES SOON TO COME INTO FORCE
New prior art provisions
The new prior art provisions being implemented by the AIA will shift the US patent system away from a "first-to-invent" system to a "first inventor-to-file" system.
The new prior art provisions will come into force on 16 March 2013 and will apply to applications that contain, or have contained at any time, a claim that has an effective date of 16 March 2013 or later. 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, provided that at least one claim is not entitled to priority.
However, the current law will continue to apply to applications in which all the claims have an effective filing date of before 16 March 2013, which means that both systems will be running in parallel for the next 20 years.
For applications filed on or after 16 March 2013, but claiming priority to an application filed before 16 March 2013, it will be necessary to file a ‘priority flag’ indicating if any subject matter has been added to the application on or after 16 March 2013. This requirement applies separately to the claims and the description. The Rules proposing the filing of a priority flag are not yet final; they should be finalised by the end of February 2013.
The new prior art provisions will move the US to a "first inventor-to-file" system. This means that 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.
However, there will still be a 12-month grace period for disclosures made by the inventor or joint inventor, or for disclosures made by someone who had obtained the subject matter, directly or indirectly, from the inventor or a joint inventor.
Under the new law, the 12-month grace period will run backwards from the priority date/earliest filing date irrespective of where the earlier application (e.g. priority application) has been filed.
A public disclosure by an inventor within the 12-month grace period can provide some limited protection against subsequent disclosures by third parties, but only if the third party disclosure is identical. As this is unlikely to be the case, applicants should be very cautious about relying on publication to protect against third party disclosures: the 12-month grace period should only be viewed as a limited safety net, to save an inventor/applicant from their own disclosures.
Removal of geographical and language restrictions
Under the new law, 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 means that more prior art is likely to be available under the new law.
Also, the effective date of earlier-filed, later-published applications (equivalent to Art. 54(3) prior art in Europe) will be their priority date, irrespective of where the priority application was filed, and their language of publication. Again, this means that it is likely that more prior art will be available under the new law than under the current law.
Earlier-filed, later-published patent applications may be removed as prior art if they are owned by the same person at the effective filing date (including collaborations under joint research agreements) or if they are subject to an obligation of assignment to the same person at the effective filing date.
New ‘derivation’ proceedings will replace interference proceedings (although interferences will continue for applications being examined under the current law).
These allow for earlier-filed third party applications to be removed as prior art if it can be shown that their subject matter was derived from the later applicant. It must therefore be shown that the later applicant was the first to conceive the invention and that they communicated it to the third party.
There is a limited time frame for bringing derivation proceedings – essentially, 1 year from publication of the third party’s patent application or 1 year from grant of the third party’s patent, and therefore it will be necessary to monitor for publication and grant of competitors’ US patent applications if you wish to make use of this procedure.
ADVICE AND CONCLUSIONS
Since it is likely that more prior art will be available under the new law, we recommend filing new patent applications before 16 March 2013, if possible, to try to take advantage of the current law.
If you have already filed a priority application before this date, we suggest filing a PCT application before 16 March 2013, or filing a second priority application before 16 March 2013, so that no new subject matter is added to the PCT application. This should mean that your application is examined under the current law when it enters the US national phase.
There does not seem to be any need to file US provisional applications after 16 March 2013, as a foreign (e.g. UK) priority application should provide the same benefits as a US provisional application under the new law.
A "priority flag" should be prepared for PCT applications filed on or after 16 March 2013 and claiming priority from an application filed before 16 March 2013 to show whether any new subject matter has been added to the description, or whether new claims have been added.