04 Apr AIA Implementation Update – 9/16/2012
On September 16, 2011, President Obama signed the AIA into law to bring the patent system into the 21st century. Several key provisions of the AIA went into effect at the one-year anniversary, September 16, 2012:
Inventors/Applicants: Effective from September 16, 2012, applications may be filed in the name of assignee (or a person/business to which an inventor has an obligation to assign). This provision eliminates the need to deal with inventors who are unable or unwilling to sign an oath or declaration required for prosecuting a patent application. Each inventor is still required to submit an oath or declaration. The Act details the statement that each inventor must make. An inventor’s statement can now be made in an assignment document. Also, a new declaration is not required in a continuation application, although a copy of the original may be required.
Accordingly, under AIA, from September 16, 2012, a practitioner needs to do the following with regard to oath in a non-provisional application:
- File a proper ADS, with the non-provisional application, use fillable new form PTO/AIA/14 (available at www.uspto.gov/forms)
- File an oath/declaration with the non-provisional application, using the latest form PTO/AIA/01 (available at www.uspto.gov/forms)
- You may file oath/declaration later with a surcharge
- The office will not send notice of missing parts if surcharge for not submitting oath/ declaration is paid
- You have 3-month non-extendable time period from the date of Notice of Allowability
- Failure to file timely oath/ declaration may result in abandonment and office will not issue Notice of Allowance
- You may use a compliant assignment instead of an oath/ declaration
For more information visit: http://www.uspto.gov/aia_implementation/faq.jsp#heading-10
Priority Examination: Effective from September 16, 2012, a procedure for priority examination for technologies important to U.S. competitiveness (Sec. 25; § 2(b)(2)) is available. Priority examination under section 25 is for products, processes, or technologies that are important to the national economy or national competitiveness without recovering the aggregate extra cost of providing such prioritization.
Pre-grant Review: For the first time in the history of U.S. patent law—AIA allows third parties to submit relevant materials to patent examiners in any given examination. Submission of proposed prior art helps examiners determine whether the innovation in the application is patentable. The new provision, 35 U.S.C. 122(e), was implemented by the USPTO on Sunday, Sept. 16, and applies to any pending application. A third party may submit any publication of potential relevance to a patent application before the earlier of a notice of allowance or the later of (1) six months after the date of first publication of the application or (2) the date of the first rejection of any claim. This new provision allows anyone to challenge another’s filings, by bringing forward prior art during prosecution, which is a more cost effective approach to limit a competitor’s patent rights compared to litigation or reexamination proceedings. Provision will apply to all applications filed before, on, or after effective date. For more information visit: http://www.uspto.gov/aia_implementation/faq.jsp#heading-13
Business Method Patents and Post-grant Review: Effective from September 16, 2012, an eight year transitional post-grant review proceeding became available for reviewing the validity of covered business method patents. A petitioner for review of a business method patent must have been sued for, or charged with, infringement of the patent before filing a petition for a transitional proceeding. The petition is limited to prior art that is described in new § 102(a). If a party chooses to invoke its rights under this provision, it would be precluded from asserting an invalidity defense based on the same prior art during a civil trial. A business method is defined as “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” The transitional post-grant review proceeding applies to business method patents issued before, on, or after September 16, 2012. http://www.uspto.gov/aia_implementation/faq.jsp#heading-12
Within nine months after grant or reissue of a patent based on patent application filed on or after March 16, 2013 under the first-inventor-to-file system, a petitioner may request to cancel one or more claims of the patent on any ground except the best mode requirement. The standard of review is “more likely than not that at least one of the claims challenged is unpatentable.” After a written decision, petitioners may not assert issues that they “raised or reasonably could have raised.” For more information visit: http://www.uspto.gov/aia_implementation/faq.jsp#heading-8
Inter Partes Review: IPR became effective from September 16, 2012. Now third parties can challenge a patent, after 9 months from grant of a patent or after a PGR, through an inter partes review to be conducted by Patent Trial and Appeal Board and completed within one year, after the nine month window closes for post grant review. Basis for requesting an inter partes review is limited to prior art patents and printed publications and only novelty and obviousness maybe raised. Changes the standard for initiating inter partes reexamination (and inter partes review) from “a new substantial question of patentability (SNQ)” to “a reasonable likelihood that the petitioner will prevail” with respect to at least one challenged claim. On September 16, 2012, the USPTO will stop accepting inter partes reexamination requests and instead move to the new inter partes review procedure to be conducted before the new Patent Trial and Appeal Board rather than before an examiner. For more information visit: http://www.uspto.gov/aia_implementation/faq.jsp#heading-7
Patent Trial and Appeal Board (PTAB): The new Patent Trial and Appeal Board (PTAB) through their new IT system called Patent Review Processing System (PRPS) started accepting submission from September 16, 2012. So far, a new, ambitious IT system up and running, and a team of PTAB judges of about 150 recruited that will increase to about 180 in the next few months, are in place to accept requests, says the Chief Judge James Smith at America Invents Act microsite: Webinar with Senior USPTO Officials.
PTAB considers patentability challenges brought under § 101 in post-grant and covered business method reviews. http://www.uspto.gov/blog/director/entry/ptab_and_patentability_challenges
Supplemental Examination: Effective from September 16, 2012, supplemental examination proceedings will also be implemented. Supplemental examination is intended to allow patent owners to clean the record of situations that could give rise to a claim of “inequitable conduct.” If the PTO determines that the new or corrected information raises a substantial new question of patentability, it may order an ex parte reexamination. Under new Subsection (c) of §257, a patent cannot be held unenforceable on the basis of conduct relating to information considered, reconsidered or corrected during the supplemental examination. For more information visit: http://www.uspto.gov/aia_implementation/faq.jsp#heading-15
Willful Infringement: Effective from September 16, 2012, there may not be an inference of willful infringement when an alleged infringer does not obtain an opinion of counsel. Codifying the Federal Circuit’s en banc decision in Seagate, the Act provides that failure of a party to obtain an opinion of counsel when charged with infringement may not be used to prove willful infringement. However, the Act goes beyond the Federal Circuit jurisprudence by also providing that failure to obtain an opinion of counsel cannot be used to prove active inducement to infringe.
Citation of Patent Owner Statements in a Patent File: Effective from September 16, 2012, either a third party or the patent owner may cite patent owner statements in a patent file. A third party can request in writing to maintain its identity in confidence, and it will be excluded from the patent file. For more information visit: http://www.uspto.gov/aia_implementation/faq.jsp#heading-14
Please contact us should you have any questions about the Act or to arrange a seminar about the Intellectual Property Management.
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