Highlights of the America Invents Act (AIA) for ` and Inventors/Clients

By this point in time, it is safe to say that about every U.S. patent practitioner is aware that there has been a major change in U.S. patent law in the form of the “America Invents Act”.  Inventors/Clients should be cognizant of the fact that the Act has the potential to bring some major changes to the U.S. patent system and should seek out the advice of their respective patent counsel on how these changes may affect them.

In an attempt to highlight some of the larger aspects of the act and give a broad overview, a brief summary is provided below.  Although some portions of the law have already gone into effect (as of September 16, 2011), other portions will be phased in over the next couple of years.  The complete statute is available for download from the U.S. government at the following website: http://www.govtrack.us/congress/billtext.xpd?bill=h112-1249

First to File System:

The United States is moving to a first-to-file system instead of a first-to-invent system (effective March 16, 2013). This puts the U.S. in closer alignment with rest of the world in determining priority of invention based on the earliest date a patent application was filed with a patent office.

Derivation Proceeding:

With the AIA, interference proceedings will no longer be used and a new procedure (a derivation proceeding) will replace it (effective March 16, 2013).  According to the USPTO, a derivation proceeding is a new trial proceeding conducted at the Board to determine whether (i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization.  An applicant subject to the first-inventor-to-file provisions may file a petition to institute a derivation proceeding only within 1 year 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.  The petition must be supported by substantial evidence that the claimed invention was derived from an inventor named in the petitioner’s application. 

Post Grant Review (PGR):

There will be a new system for challenging the validity of patents, the “post grant review”.  The time to file a petition under this new system is very limited (e.g. within 9 months of patent grant) and has unique rules and procedures.  For patent challenges after the PGR time has lapsed, a new Inter Parties Review system may be utilized.  According to the USPTO website, the PRG is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3).  The PGR process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent.  The patent owner may file a preliminary response to the petition.  A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable.  If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). 

Prioritized Examination:

The USPTO will be authorized to proceed with a program for a fee-based prioritized examination, which may be a useful tool for clients who are interested in an expedited examination for particular patent applications.  This will cover applications for original utility or plant patents, and has already taken effect.  At the outset, only 10,000 applications will be accepted in any fiscal year.  Accordingly, space in this program may be limited, and it may be best to apply for this program earlier in the fiscal year.  The stated goal of this program is to provide a final disposition within twelve months, on average, of prioritized status being granted.  Of note, for nonprovisional utility applications, users of this program must be able to access EFS-Web.  For plant applications, requests for this program must be paper filed.  A full guide for this program is available at:

http://www.uspto.gov/aia_implementation/track-1-quickstart-guide.pdf

Patent Marking:

Marking your products with patent numbers is now easier.  The marking rules now include “virtual marking” which allows the product to refer to a company website for additional information on which patents cover the given product.  Additionally, the act expressly states that it is not false marking to mark a product with an expired patent that covered that product.

Micro Entities:

AIA introduces a new definition and segment of applicants, namely micro entities (effective September 16, 2011), that are distinct from the segment known as small entities (as provided for under 35 U.S. C. § 41(h)(1)).  Basically, a micro entity will receive a 75% discount on some fees, as compared to the 50% discount available to small entities.    The AIA defines a micro entity as an applicant who certifies that he/she:

• Qualifies as a small entity;
• Has not been named as an inventor on more than 4 previously filed patent applications;
• Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and
• Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.

Please note that this article is intended to only provide a brief summary of the major points of the America Invents Act and that we recommend that you review the act yourself, take advantage of the numerous seminars available, or contact qualified patent counsel.

Dobrusin Thennisch, PC represents clients in all aspects of domestic and foreign patent, trademark and copyright matters, with a focus on materials, chemical and mechanical patents, as well as advertising and entertainment law. Our experienced attorneys facilitate a sustainable competitive advantage for market and technology leaders around the world.

The firm provides strategic intellectual property law expertise and personalized client service that educates clients with the necessary tools for leveraging intellectual property to further their business objectives.  We also work with progressive-oriented clients, from emerging to Fortune 500 companies, to develop effective product development marketing strategies and to provide strategies for effective development of internal intellectual property policies. 

Eric R. Kurtycz is currently registered before the State Bar of Michigan, the Federal District Court and the U.S. Patent & Trademark Office. 

Mr. Kurtycz joined Dobrusin & Thennisch PC in 2006. Mr. Kurtycz has almost 20 years of Automotive Industry experience, working in a range of Engineering and Management roles for both OEM and Tier companies which included: Ford Motor Company, Lear Corporation and Dow Automotive. As an inventor, Mr. Kurtycz has nine issued patents, primarily in the field of structual seat components.

Currently, Mr. Kurtycz is involved in preparing and prosecuting patent and trademark applications with the U.S. Patent and Trademark Office, performing prior art searches and writing patentability opinions, formulating freedom to operate opinions, due diligence contract reviews and other intellectual property matters.  Eric can be contacted on +1 (248) 292-2920 or by email at ekurtycz@patentco.com