Additional Provisions of New U.S. Patent Law are Now in Effect

October 11, 2012, 03:59 PM

When the Leahy-Smith America Invents Act became law on September 16, 2011, some of its provisions went into effect immediately, others were scheduled to take effect on the first anniversary of the laws enactment and still others were deferred until March 16, 2013. Those final deferred provisions cover the most important change implemented by the AIA taking the U.S. patent system from one where priority of rights is determined on a first-to-invent basis to one in which they will be largely determined by which inventor files the first application. They have been addressed in earlier postings on 12/2/11 and 2/29/12 and will be the subject of future posts. For todays purposes, I just want to summarize the changes to prior U.S. patent law that took effect under the AIA on September 16, 2012. They are:

  1. Under prior law a U.S. patent application had to be submitted in the name of the individual inventor or inventors of the invention it covered. The AIA no longer requires the inventor or inventors to be the actual applicants for the patent on their invention, but instead now permits the application to be filed in the name of an entity to whom the inventors rights have been assigned or to whom they are under an obligation to assign their rights.
  2. The AIA replaced previous rules with new ones governing submissions of prior art by third parties who want it to be considered in the examination of a pending patent application.
  3. Previous patent reexamination procedures have been replaced by a process designated by the AIA as inter partes review. This process cannot be initiated until a patent has been in force for nine months, and challenges to validity of an issued patent under it are allowed only on the basis of prior patents and publications.
  4. The AIA also establishes new supplemental examination procedures allowing patent owners to have the patent office undertake further review of issued claims at any time during the life of the patent.
  5. Special AIA rules relating to post-grant review of covered business method patents relating to financial products and services also took effect on September 16, 2012.

These AIA changes that that took effect last month, as well as the ones that went into effect a year ago, relate largely to the devil’s in the details of patent prosecution post-issuance activities. While they will not change the U.S. patent landscape as drastically as the upcoming AIA change from a first-to-invent to a first-to-file regime, businesses and academic/research institutions that rely on patents and patented technologies should invest the time and effort needed to make sure they have an adequate understanding of these latest changes to U.S. patent law. –Robert E. Smartschan