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AIA changes

The Largest Patent System Overhaul Since 1836: Leahy-Smith America Invents Act (AIA)

On September 16, 2012, the Leahy-Smith America Invents Act went into effect.  Or more commonly referred to as the AIA.

The below is a quick snapshot of some of the changes.

1.  Inventor’s oath or declaration.  

The AIA provides new options, and “greater flexibility” for filing a declaration

  • An assignment document can act as a declaration
  • In applications with an application data sheet, each inventor can execute a separate declaration
  • Filing a declaration can be postponed until the application is in allowance.

This is on TOP of the already established filing practices

2.  Pre-issuance submissions.  

Third parties may now file pertinent publications (provided they also submit a short statement of relevance) in patent applications prior to issue.

Basically, it’s a way to allow any third party to submit:

  • patents
  • published patent applications
  • other printed publications of potential relevance to examination

This also includes any litigation papers, or court documents not subject to a court-imposed protective or secrecy order (what this means, is that if the court has placed some sort of restriction or secrecy on a document, it cannot be used)

However, a third party may NOT submit:

  • trade secrets information
  • unpublished internal documents
  • or other unpublished documents

3.  Supplemental examination.  

Patent owners can now request a supplemental examination of an issued patent.  If such a request for supplemental examination is accepted, the USPTO will put the patent through ex parte reexamination.

The KEY point for this change is this: The minimum threshold or determining factor for acceptance is whether a substantial new question of patentability has been raised.

4.  Citation of patent owner claim scope statements.  

This change allows a patent owner or third party greater freedom and flexibility with the type of information they may include and/or submit into a patent file.

One of the key changes is that statements made by the patent owner about claim scope that were made in a federal court or a USPTO proceeding may now be submitted.

5.  Post grant review (PGR)

Post grant review is yet another method for third parties to challenge or call into question a patent’s validity. While PGR is somewhat similar to inter partes review (petition requirements and response tend to be similar), PGR only applies to patents granted through the new first-inventor-to-file system.

6.  Inter partes review.  

Inter partes review under 35 U.S.C.  § 311(c) now takes the place of inter partes reexamination.

Someone who initiates an inter partes review can ONLY request to call into question (basically, they think the claims are not patentable) one or more patent claims on the basis of lack of novelty under 35 U.S.C. § 102 or as being obvious under 35 U.S.C. § 103.

Furthermore, they can only bring up these points using prior art consisting of patents or printed publications.

An inter partes review must be filed nine months after the grant of a patent or the date of termination of any post grant review of the patent.

Lastly, in order to submit an inter partes review, the petition must show there was a reasonable likelihood that the petitioner would prevail as to at least one of the claims (meaning, you better have a LOT of merit to your claims/statements).

7.  Covered business method review.  

There is this new transitional program for some business method patents.  It’s still rather murkey and up in the air, but the take away is you can challenge a covered business method patent’s validity through post-grant review.

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