President Obama signed the Leahy-Smith America Invents Act (AIA) on Sept. 16, 2011, setting into law the most momentous changes to the U.S. patent system since 1952.
AIA changes the U.S. patent system from a “first to invent” system to a “first to file” system, which more closely aligns the U.S. laws with international laws. It is hoped that the AIA will speed up the patent process, encourage innovation and create jobs.
Although much remains unknown, the University of Tennessee Research Foundation believes the new law will not adversely impact its ability to commercialize the university’s intellectual property. News will continue to be monitored with counsel, in order to make the best decisions regarding UT intellectual property.
Below is an overview of the most significant changes to the patent system, including the date they go into effect.
First-Inventor-to-File provision – Effective March 16, 2013
The most significant and most discussed aspect of the AIA is the change from a “first-to-invent” patent system to a “first-inventor-to-file” patent system. This has implications on the scope of what publications (“prior art”) may be used against an application to defeat patentability.
Under the previous laws, a one-year grace period consisting of the time between a public disclosure and the filing of U.S. patent application covered all prior art, both one’s own and that of others. Under the new law, a one-year grace period is given to the inventor only for his own publications. Publications by others during the grace period are now prior art to the inventor’s application if filed later, which may be used to defeat patentability. The grace period also extends to the inventor for publications by others, if the publication is derived from the inventor’s invention (but the burden of proof is on the inventor to demonstrate such derivation.) With the AIA, one implication of this provision is that the body of prior art available to be used against an application is greatly expanded.
To counter this, inventors should disclose new inventions to UTRF as quickly as possible so that after due diligence is complete, patent filings may occur before public disclosure, or as soon as possible after publication (publication includes posters, enabling abstracts, and white papers posted on a website).
Changes to Patentable Subject Matter – Effective Sept. 16, 2011
No patents will be issued with claims “directed to or encompassing a human organism.” This was worded very broadly in the AIA and UTRF anticipates that it will take court review to define what this statement entails.
Inventor Oath – Effective Sept. 16, 2012
The previous law required that, at the time of filing, each inventor execute an oath or declaration that the invention was made by him. Under the new law, an organization may file an application without a declaration, if the inventor was under an obligation to assign to the organization. Some implications of this provision include potential cost savings and reduced resources usage.
Pre-Issuance Submissions – Effective Sept. 16, 2012
Once the inventor’s patent application is published, third parties are allowed to submit information about prior art with a statement of relevance of that prior art to the U.S. Patent and Trademark Office. The third party may remain anonymous. Like post-grant proceedings, this provision could increase the body of prior art available, and increase the cost and duration of prosecution.
Post-Grant Review – Effective Sept. 16, 2012
Two provisions allow a separate party to submit evidence challenging the validity of any claims in an issued patent. In both cases, the challenge must be viewed by the U.S. Patent and Trademark Office as having a reasonable likelihood of prevailing. In both cases, the separate party has the burden of proving its case, and the patent owner has the right to amend or cancel claims.
- Post Grant Review: The request must be filed no later than nine months after the date of issue.
- Inter Partes Review: The request must be filed nine months or later after the patent has been issued.
Micro Entity Status – Effective Sept.16, 2011
Many U.S. Patent and Trademark Office fees are heavily discounted for those entities qualifying as a micro entity.
The micro entity status applies if the applicant’s employer, from which the applicant obtains the majority of the applicant’s income, is an institution of higher education as defined in section 101(a) of the Higher Education Act of 1965 (20 U.S.C. 1001(a)); or the applicant has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.
The 75 percent micro-entity discount will apply to fees for filing, searching, examining, issuing, appealing and maintaining patent applications and patents.