America Invents Act
First to File

Antonio Meucci
Inventor of the Telephone

136 South Wisconsin St.
Port Washington, WI 53074
(262) 268-8100

America Invents Act - Key Changes

Changes effective March 16, 2013 (STAGE 4):

  • First-to-File System Implemented. To be eligible for a patent, an inventor must (1) file a patent application first, (2) publish the subject matter to be patented and then file a patent application within a year, or (3) prove that an applicant who filed first derived the claimed subject matter from the inventor. §3.
  • Derivation Proceedings. If the inventor of an earlier-filed patent application can be shown to have derived the invention from the inventor of a later-filed patent application, the later applicant can initiate a derivation proceeding within one (1) year of issuance of the earlier-filed patent application. §3.
  • Definition of Prior Art. Concurrent with changing to First-to-File, the definition of prior art under 35 U.S.C. § 102 and the conditions for patentability under 35 U.S.C. § 103 will be dramatically redefined. In general, information that is made public prior to a filing date will be available as prior art under § 102 or in an obviousness assessment under § 103, unless that information derives from the applicant.

Changes implemented September 16, 2012 - March 15, 2013 (STAGE 3):

  • Revised Requirements for Inventor’s Oath. Simplified standards allow the assignee to execute an oath on behalf of unavailable, unwilling, or deceased inventors. The Declaration and Assignment may be combined into one document. The Declaration is shorter and no longer needs to identify inventor’s citizenship and may use inventor’s work address as a mailing address (rather than home address).
  • Third Party Submission of Prior Art. Broader opportunity for third parties to anonymously submit prior art during prosecution of a patent application. Changes apply to all pending patent applications and do not require the third-party submitter to serve the relevant patent applicant. The USPTO will not notify the applicant that third-party prior art has been submitted.
  • Supplemental Examination. New procedure for considering prior art that was not considered during prosecution and reconsidering or correcting information believed to be relevant to an issued patent. This process is to be completed within 3-month statutory timeframe. The request may be filed by patent owner any time during life of patent. After reviewing the request, the USPTO will determine whether to order ex parte reexamination.
  • Inter Partes and Post Grant Review. The new law provides a revamped review process for issued patents. Revised post grant review (PGR) procedures apply within nine (9) months of issue; revised inter partes review (IPR) procedures apply nine (9) months after the patent issues. A petition for PGR must demonstrate it is “more likely than not” that at least one claim is unpatentable, which is a higher standard than the “reasonable likelihood” for an IPR petition. All patents are eligible for IPR, but only patents filed after March 16, 2013 are eligible for PGR.
  • Business Method Patents. For the next eight years, a company charged with infringement of a “business method patent” can request post grant review of that patent if it issued prior to enactment of the new law. Under the new law, a “business method patent” is defined as a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term “business method patent” does not include patents for technological inventions. The post grant review may be filed 9 months after issuance of the patent and is subject to the same “more likely than not” unpatentability standard discussed above.
  • Prioritized Examination for “Important” Technology. If the technology is deemed important to the national economy or competitiveness, a patent application may receive priority for examination. For eligible applications, USPTO will issue its final disposition within 12 months.

  • Changes implemented November 15, 2011 (STAGE 2):

    • Electronic Filing Incentive. Patent application filing fee is increased by $400 if the application is not filed electronically. §10.

    Changes implemented September 16, 2011 - October 1, 2011 (STAGE 1):

    • Micro-Entity Status Defined. Traditionally, patent applicants were categorized either as a “large” entity or a “small” entity. If a patent applicant qualifies as a “small” entity, the majority of the US PTO fees are reduced by 50%. In an attempt to encourage more patent filings by sole inventors and small companies, The Act adds “micro-entity” as a third category of applicants. A “micro-entity” is a small entity where the applicant is listed on no more than four (4) previously-filed patent applications (certain additional limitations will also apply). If an Applicant qualifies as a micro-entity, certain US PTO fees are reduced by 75%. H.R. 1249, §10.
    • Fee Increase. Congress instituted a 15% surcharge on most US Patent Office fees. This 15% fee increase is defined as a “transition surcharge” and is effective immediately (i.e., September 26, 2011) until a more formal US PTO rulemaking process is complete. A link to the official US PTO fee schedule is provided in the Additional Resources section, below. §11.
    • Best Mode. The best mode contemplated by the inventor for carrying out the invention must be disclosed in a patent application. While The Act has not removed this requirement, The Act now makes clear that failure to disclose the best mode “shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” §15.
    • Inter Partes Reexamination. The Act immediately implements a new standard for initiating an inter partes reexamination, which requires a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. On September 16, 2012, the US PTO will stop accepting requests for inter partes reexaminations and implement a new inter partes review procedure (discussed below). The standard for ex parte reexamination remains unchanged. §6.
    • Prior Use Defense. The Act expanded the scope of the “prior user rights” defense to patent infringement to include prior commercial use of any subject matter in any technical field (under the previous law, the defense applied only to methods of doing or conducting business). The change applies to patents issued on or after September 16, 2011. §5.
    • Prioritized Examination Fee. A patent applicant who wishes to expedite examination of their patent application may pay an additional fee of $4800 in addition to the standard examination fees. The $4800 is reduced for small entities. §11.
    • Tax Strategies. An invention related to a strategy for reducing, avoiding, or deferring tax liability is deemed insufficient to differentiate from the prior art. §14.

    Additional Resources

    Please visit the below sites for additional information regarding the AIA:

    **This above information regarding implementation of the Leahy-Smith “America Invents Act” is provided by ZPS Group, SC for informational purposes only and does not constitute legal advice, nor can it be inferred therefrom that an attorney-client relationship has been formed. Should you need legal assistance or have questions regarding this letter or other matters, please call our office at 262-268-8100.