What every business owner and inventor needs to check out about the America Invents Act (AIA) and how patent law is changing.

The America Invents Act is a significant reform to the United States patent system.  The second phase of the Act went into effect in September of this year, however the third phase may have the most impact for individual and smaller sized business inventors.

The first part of the Act that went into effect on September 16, 2012 started the multi-phased implementation, which culminates in phase three, which takes effect March 16, 2013.

The big changes in a short plain language summary:

  1. “First-to-file”(FITF) provision (March 16) where for the first time in the U.S. the first inventor to file for a patent—not the first to invent— is the patent owner. This means you need to get on record ASAP!
  1. New Micro-entity status resulting in a patent filing fee (USPTO fees) reductions for:
    • Independent inventors with a prior calendar year gross income of less than 3 times the national median household income who has filed four or fewer previous non-provisional patent applications (excluding inventions assigned to employers).
    • A university or an inventor under an obligation to assign an invention to a university.
  1. Expanded definition of prior art used to determine patentability, including public use, sales (including foreign offers for sale), publications, and any disclosures available to the public anywhere in the world as of the filing date, excluding the publication-conditioned grace period by the inventor within one year of filing.
  1. Reform in tax strategy inventions provides that any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.
  1. False marking claims are eliminated unless filed by the U.S. government or a competitor who can prove a competitive injury.
  1. Marking a product previously covered by a patent (but now is a dead patent) is no longer a violation.
  1. Failing to disclose a best mode is no longer a basis to invalidate an issued patent.
  1. If an invention was used by anyone (a “user”) more than one year before a subsequent inventor files for a patent on that invention the user can continue using the invention even after the subsequent inventor is granted a patent (provided the user did not obtain the basis for the invention from that subsequent inventor).
  1. Confidential Sales of the patentable invention no longer begins the 1 year grace period.
  1. Interference proceedings are eliminated because of priority is determined by the filing date instead of the date of the invention.   Instead a “derivation” proceeding will now be used to determine that the filer is the actual inventor..
  1. Companies can now file patents on behalf of inventors under assignment.
  1. Third parties (who are not part of the patent process) can submit written material that is relevant to the examination of a patent that is not theirs.
  1. A patent owner can now request a supplemental examination of their own patent. The purpose of a supplemental examination is to allow the patent owner to request the examiner to consider or correct information believed to be relevant to the patentability of the invention.
  1. Significant changes to trial proceedings (post-grant review, inter partes review and covered business method patent review).

My advice? Check out the USPTO website (visit https://www.uspto.gov/aia_implementation/index.jsp) and… Get to the patent office with your patent as soon as possible… call me or email if you need help.

Posted in: Intellectual Property - Patents

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