America Invents Act

Practical Patent Law: What an IP manager should know about the America Invents Act¹

Wider prior art scope: Before the AIA, only US applications and English-language PCT applications had the advantage of being citable as offensive prior art (i.e., for invalidating another patent) as of its filing date.

Now, all foreign-language applications, including published applications filed before 16 March 2013, may be cited as prior art as of its foreign-priority date for examining AIA applications. AIA applications include US applications filed on or after 16 March 2013 as well as PCT applications designating the US that are filed with a PCT receiving office on or after the same date.

Public uses and sales outside the U.S. are now also citable prior art in the US.

Fast Tract Prosecution: The so-called Track One Prioritized Examination provides significantly faster examination of first filings for a fee: $4.000 USD, with 50 % and 75 % discounts for small and micro entities.

How much time does your money buy? Currently, for fiscal year 2013, Track One applications have an average first action pendency of 3.9 months versus 18.4 months for all other cases. Applications are limited to 4 independent claims and 30 total claims. First filings, continuations, and RCEs are eligible.

Joint research/common ownership provision: The AIA delays when common ownership must be proven by a joint-research agreement, an assignment, or a duty to assign, in order to remove a "competing" U.S. application from the prior art.

An earlier-filed first application published after the filing date of a second application is not prior art if the two applications were in "common ownership" at the effective filing date of the second application. Thus, it may be possible to purchase unpublished prior art under the above circumstances. Further, subsequent improvement applications filed under the above circumstances may exclude previously-filed, related applications from the prior art.

Expanded Invalidity Proceedings: Under Inter Partes Review, US patents may be challenged at the USPTO by a third party upon a showing of a reasonable likelihood that at least one claim is anticipated or obvious. Parties served a patent infringement complaint have one year to instigate such USPTO proceedings.

Inter Partes Review is typically significantly cheaper and faster than US patent litigation. Discovery is considerably narrower in scope and a final determination by the Board will be issued within one year (extendable by six months upon showing good cause) after filing the initial petition at the USPTO.

An additional proceeding, Post Grant Review, will be available for patents filed on or after 16 March 2013. Post Grant Review is limited to nine months after grant, but, in contrast to Inter Partes Review, allows third parties to invalidate patents on further grounds than just novelty and obviousness.

by Sam Bergstrom²
Status: August 25, 2014

 

¹Disclaimer: This Article is for informational purposes only and
is not intended to be legal advice and does not establish an
attorney-client relationship. Legal advice of any nature should
be sought from your legal counsel.

²Sam Bergstrom is a US patent attorney based in Munich, Germany