America Invents Act

On September 16, 2011, the United States patent law was changed in some very fundamental ways, some of which come into effect immediately and others a few months or years later. The following briefly discusses some important changes:

First to File

Effective March 16, 2013, the first inventor to file is the one to be granted the patent. Therefore it is vital in many cases that you file as soon as possible. There is, however, a one-year grace period that enables an inventor to file within one year after the inventor, or someone deriving the invention from the inventor, discloses the invention. So if you disclose your invention and another independent inventor files a patent application before you, it is still possible to file subsequently and be awarded the patent, provided you file within the one-year grace period. No court cases, however, have as yet addressed this issue.

Derivation Proceeding

Effective March 16, 2013, a remedy will be available in cases were someone files a patent application illegitimately. If someone derived the invention disclosed in a patent application, the true inventor can have the inventorship corrected if it can be established that “…an inventor named in an … application derived the claimed invention from an inventor…without authorization…” A petition to so correct the inventorship must be filed within the one year period beginning on the date of the first publication of a claim to an invention that is the same or substantially the same as the earlier application’s claim to the invention.

Post Grant Review (PGR)

Effective September 16, 2012, anyone who is not the owner may petition the Patent Office to cancel as unpatentable one or more claims of a patent. The PGR must be filed within nine months of the grant of the patent or reissue patent. Invalidity can be established through publications, declarations of supporting factual evidence, and expert opinion. The standard of proof is by preponderance of the evidence.

Inter Partes Review (IPR)

Effective September 16, 2012, anyone may petition the Patent Office to cancel as unpatentable one or more claims based only on printed publications. The IPR must be filed after the later of (a) the date that is nine months after the grant of the patent or reissue patent or (b) the date of termination of a Post Grant Review, if one was filed. The standard of proof is by preponderance of the evidence.

Business Method Patents

A transitional program that sunsets within 8 years from September 16, 2012, applies to “covered” business method patents, subjecting them to a Post Grant Review at any time on or after September 16, 2012, provided the petitioner has been sued or threaten with an infringement suit.. A “covered business method patent” relates to “financial products” or “services” and not “technological inventions.” What these terms mean is to be determined by the Patent Office.

Prior Commercial Use Defense

Effective September 16, 2011, prior secret commercial use in the United States more that one year before the filing date of the patent is a special defense. It does not invalidate the patent, but is unique to the party whose use is “…in connection with an internal commercial use or an actual arm’s length sale or other arm’s length commercial transfer of a useful end result of such commercial use…”

Virtual Marking

Effective September 16, 2011, virtual patent marking is available via the internet. Patent marking gives infringers notice to establish damages. A patented product may be marked by “fixing thereon” the word “patent” or the abbreviation “pat.” together with the address of a posting on the internet, accessible without charge, that associates the patented product with the number of the patent.

Elimination of Tax Strategy and Human Organism Patents

Effective September 16, 2011, tax strategy patents are prohibited, but inventions involving tax filing and preparation software are not. The Act prohibits patenting a human organism, but uses the phrase “directed to or encompassing a human organism…” Perhaps a claim “directed to” applying drugs or other physical action on a human organism to cure a disease is invalid.

Increase in Fees

On September 26, 2011, a 15% transition surcharge is being applied. A one-year fast track is also possible for prioritized applications for a fee of $4,800–less for small and micro entities.

Dylan Connors

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