U.S. Enacts Historic Patent Reforms in the "America Invents Act"

Significant Changes Include "First-to-File" and Faster (Prioritized) Patent Examination

The United States Congress recently enacted "The America Invents Act" (AIA), a package of significant reforms to the U.S. Patent Act.  It is not an overstatement to say that these are the most significant reforms to the patent law in the history of the U.S.

Although the change that has received the most attention in the press is the shift to a "first-to-file" system for determining which of two applicants for the same invention is entitled to a patent, many other significant changes and additions to the patent law have received little or no attention outside of the legal profession. 

Furthermore, although some of the changes, such as the "first-to-file" provisions, will not go into effect for another year or more, several important provisions of the new law have already gone into effect.

The following is just a sampling of some of the most important provisions of the new law:

• "First-Inventor-to-File": Beginning in March 2013, if two patent applications are filed for the same invention by different inventors, only the inventor whose patent application was filed first will be entitled to continue pursuing patent protection.  This marks a significant change from existing law, under which the dispute would be decided in favor of the first to have invented the invention.  The new law, however, has exceptions and nuances which cause it to differ from the "first-to-file" systems in other countries and that will require patent applicants to plan and execute their patent strategies carefully.  For example, the second inventor to file may still prevail if he or she can prove that the first inventor to file derived (e.g., copied) the invention from the second inventor to file.  As a result, it will still be important for inventors to keep detailed and accurate records of their dates of invention in case it is necessary to prove that they did not derived an invention from someone else, or to prove that someone else derived an invention from them.
• One Year Grace Period Retained Only for Activity of the Inventor: Under existing U.S. law, an inventor may file a patent application up to one year after anyone has published (anywhere in the world) or publicly used or sold (in the U.S.) the invention.  Under the new law, the inventor will still have up to one year from his or her own activity (e.g., publication, public use, or sale) in connection with an invention to file a patent application, but will not be allowed to file a patent application at any time after someone else has published, publicly used, or sold the invention.  Once again, there are exceptions and nuances to this new rule that wll require patent applications to plan and execute their patent strategies carefully.
• Faster (Prioritized) Patent Examination: Patent applicants can now (as of September 26, 2011) obtain faster examination of their patent applications by paying an additional filing fee to the Patent Office.  Although there is no guarantee that prioritized examinations will be granted as patents, the Patent Office is promising to provide as least two rounds of examination within 12 months, which will likely mean an initial examination within no more than six months.  This represents a significant increase in speed compared to the 1-3 years usually experienced by many applicants.  The program currently is limited to 10,000 patent applications in the first year, but the Patent Office will revisit this number and may increase it if the program proves successful.
• Post-Grant Proceedings: New proceedings will be available after a patent is granted to enable patent owners to fix errors in granted patents and to enable competitors to attempt to invalidate granted patents more quickly and inexpensively than in court.  For example, once a patent has been granted, it will be open to challenge on any ground for up to nine months.  Parties who challenge a patent in such a proceeding, however, may not raise the same issue in court.  A new "inter partes review" (IPR) proceeding will replace inter-partes re-examination.  Inter partes review will be limited to cases in which the requestor has demonstrated a "reasonable likelihood that the requestor would prevail with respect to at least [one] of the claims challenged."
• Effective Elimination of the "Best Mode" Requirement: The peculiar "best mode" requirement of U.S. patent law, while not eliminated, has been signicantly weakened by eliminating the ability to invalidate a patent for failure to satisfy the best mode requirement.  This change may strengthen U.S. patents that were filed based on applications from countries that have no best mode requirement.  In practice, however, those who challenge the validity of patents may now seek to claim that patents that do not satisfy the best mode requirement should instead be invalidated for failure to satisfy the written description and/or enablement requirements.

For additional information about these and other elements of the America Invents Act (AIA) and its implementation, see:

• U.S. Patent and Trademark Office web page on the implementation of the AIA
• Patently-O article on the implementation of the AIA
• IP Watchdog article on the implementation of the AIA