Observations on the America Invents Act

October 24, 2011

On September 16, 2011, President Obama signed into law the America Invents Act (AIA), enacting the most significant modifications to U.S. patent law since 1952. This legislation is as complicated as it is impactful, and I wanted to share some of the most important changes from our perspective at Intellectual Ventures: 

  • Change from the present “first-to-invent” system to a “first-to-file” system, with elimination of current grace periods following invention dates. As of March 16, 2013, the filing date will establish priority, rather than the invention date, which brings our system closer to the patent laws of other countries.  
  • Institution of a “first-to-publish” grace period for one year after the first inventor to publish his/her invention.  This supersedes a later first-to-file date.
  • New definitions for prior art relating to filing dates rather than invention dates.
  • Modification of existing reexamination processes, including establishing new post-grant patent challenge proceedings and a new “derivation” proceeding to verify invention rights of first-to-file applicants.
  • A new schedule of fees, coupled with an additional 15% fee surcharge – already in effect.
  • Special proceeding to challenge business method (financial) patents.
  • Significant limitations on false marking actions and elimination of best-mode challenges.
  • The AIA is a lengthy statute with many hard-fought changes that will have a significant impact on United States patent law.  However, we and a great many U.S. companies, universities and small innovative entities agree that an important element missing from this law is formally putting an end to Congress’ continued diversion of fees from the U.S. Patent Office.  With a backlog of about 700,000 patents, it remains crucial that we provide the Patent Office with the resources necessary to maintain an efficient and healthy system, and we will continue to support proposals for legislation to deal with this issue.  
  • At the same time, we are currently working with companies and IP organizations on proposals for implementing the AIA at the Patent Office. The many new proceedings that that AIA creates will present both challenges and opportunities for the U.S. patent system.  It is through Patent Office regulations that the AIA’s potential for improvement in patent quality and increase in certainty for patent holders, along with a minimization of the pendency of patent challenges, may be realized.   
  • For a more detailed look at the AIA, we have made available a comprehensive presentation here.

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