The America Invents Act (AIA) is the first major revision of US patent law for about 60 years and it introduces some fairly significant changes. One of the major changes is the shift from the current “first-to-invent” patent system in the US to a “first inventor-to-file” system and this will be achieved by new provisions changing the way in which prior art is defined. These new prior art provisions came into force on 16 March 2013. It is also now possible to file in the name of the assignee in the US and there are expanded mechanisms for third parties to challenge both pending US patent applications and issued US patents. In addition the introduction of supplemental examination may allow a patent holder to address its inequitable conduct. The major changes being implemented as a result of the AIA are summarised below.
New prior art provisions
The new prior art provisions came into force on 16 March 2013 and 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 if at least one claim is not entitled to priority.
However, the old 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 is necessary to file a statement indicating if any claims have been added to the application on or after 16 March 2013 (e.g. new claims added to a PCT application filed on or after 16 March 2013). The time limit for filing this statement is the later of:
- four months from the filing date of the later-filed application,
- four months after entry into the US national phase,
- sixteen months from the filing date of the priority application, or
- the date that a first claim having an effective filing date on or after 16 March 2013 is presented in the application.
If no claims have been added to the application on or after 16 March 2013, no statement will be required.
The new prior art provisions have shifted the US to a “first inventor-to-file” system. This means that it is no longer possible to swear behind earlier third party disclosures or earlier-filed patent applications by demonstrating an earlier date of invention. However, there is still 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 disclosed directly or indirectly from the inventor or a joint inventor.
Under the new law, the 12-month grace period runs backwards from the priority date/earliest filing date irrespective of where the earlier application (e.g. priority application) has been filed, i.e. the priority application no longer needs to have been filed in the US for the grace period to be calculated backwards from the priority date, rather than the filing date.
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.
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. These applications also no longer need to have been published in English to represent prior art. Again, this means that it is likely that more prior art will be available under the new law. As under the old law, earlier-filed, later-published applications are available for the assessment of both novelty and obviousness in the US. In addition, they do not need to enter the US national phase – they only need to designate the US.
As mentioned above, the 12 month grace period for inventors’ own disclosures will run backwards from a foreign (i.e. non-US) priority date.
Common ownership of earlier-filed, later published patent applications
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, or if they are subject to an obligation of assignment to the same person at the effective filing date. Common ownership includes collaborations under joint research agreements, provided certain conditions are met. However, such commonly-owned earlier-filed patent applications are still available for obviousness-type double patenting under the new law if there is at least one common inventor.
US provisional applications
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.
New derivation proceedings have replaced interference proceedings, although interferences will continue for applications being examined under the old law.
Under these new proceedings, it may be possible to remove earlier-filed third party applications as prior art if:
- The 3rd party’s earlier application or patent claims the same invention;
- The 3rd party’s earlier application or patent has an earlier effective filing date; and
- The subject matter of the 3rd party’s application or patent was derived from the party filing the later application (i.e. it must be shown that the later applicant was the first to conceive the invention and that they communicated it to the 3rd 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.
Filing in the name of the assignee
It is now possible to file US patent applications in the name of the assignee, rather than in the name of the inventor(s). (This has been the case since 16 September 2012.) 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.
The assignment does not need to be in place on filing; an “obligation” to assign is sufficient.
For PCT applications designating the US, it is no longer necessary to name the inventor as applicant for the US only; the assignee can be named as applicant for all designated states.
The statements that need to appear on the inventor declaration for the US changed on 16 September 2012. Therefore, the new-style declarations need to be used for US and PCT(US) applications filed on or after this date. It will also be necessary to file a new-style inventor declaration on continuation applications filed on or after 16 September 2012.
It is now possible to file an inventor declaration at any time up until the issue fee is paid.
Pre-issuance 3rd party submissions
These may be filed against pending third party patent applications and are available now for all pending applications. However, the time frame for making such submissions is 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).
These submissions can be filed anonymously.
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).
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, and the request will be considered by the new Patent Trial and Appeal Board. There is a fairly high threshold for initiation – the requester must demonstrate upfront that it is “more likely than not” that at least one of the challenged claims is unpatentable.
Post-grant review cannot be requested anonymously; all parties in interest must be identified and there is an estoppel effect in subsequent litigation.
The costs associated with requesting post-grant review are fairly high, and the official fee is ~$35,000. However, this procedure will be much cheaper than litigation.
The process is intended to be fairly quick and 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 came into force on 16 March 2013), but is also available for business method patents granted under the old law (within 9 months of patent grant).
Inter partes review
This new procedure replaces inter partes re-examination and is available for any issued US patent. It can be requested after the later of:
- 9 months after patent grant;
- 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, it cannot be requested anonymously; all parties in interest must be identified and there is an estoppel effect in subsequent litigation. Also 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. Again, there is a high threshold for initiation and the requester must demonstrate that there is a “reasonable likelihood” that they will prevail with respect to at least one challenged claim. Like post-grant review, the official fee for requesting inter partes review is fairly high – approximately $30,000. However, this procedure is still likely to be much cheaper than litigation.
This new procedure may allow a patent holder to address its 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 ~$5000 for the initial request and ~$16000 for re-examination (both must be paid upfront).
This new procedure is available for any issued US patents.
It is now possible to claim microentity status in the US, which provides for a reduction in official fees of 75%.
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.
Best mode is no longer a defence to infringement, but remains a requirement for patentability.
This is available 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.
Prioritized examination is not currently available for US national phase applications; it is only available for direct US utility or plant applications. However, it is available for continuations filed from US national phase applications.
Prioritized examination is currently limited to 10,000 applications per year.
Many other changes have been implemented as a result of the America Invents Act. These changes are too numerous to describe here, but if you would like to more about these changes or would like further advice about how the implementation of the America Invents Act may affect you, please contact us.
This information is simplified and must not be taken as a definitive statement of the law or practice.