Anticipate This!™ | Patent and Trademark Law Blog

Leahy-Smith America Invents Act – One Year Anniversary (September 16, 2012).

Posted in Practice Commentary by Jake Ward on September 15, 2012

The one year anniversary of the Leahy-Smith America Invents Act (AIA) is September 16, 2012.  As most practitioners know, the AIA represents the first major overhaul of U.S. patent law in approximately 60 years.  The AIA has also been implemented in stages, with the one year anniversary representing the next stage of implementation.

Most notable are the following changes to U.S. patent law that will take place on September 16, 2012:

• Inventor’s Oath/Assignment by Assignee – If an inventor has assigned (or is obligated to assign) an invention, the assignee can file the application for the patent if the inventor is unavailable or unwilling to sign.  Also, the requirements for the oath or declaration by the inventor(s) have been streamlined.
• Pre-issuance Submissions By Third Parties – A third party may submit relevant publications for the patent examiner to consider before the earlier of (a) the date the notice of allowance is mailed to an applicant, or (b) the later of (1) six months after the date on which the application for patent is first published or (2) the date of the first substantive office action during the examination of an application.
• Supplemental Examination – Patentee may request supplemental exam “to consider, reconsider, and correct information believed to be relevant to the patent”; must raise “a substantial new question of patentability”.
• New Patent Trial and Appeal Board (PTAB)

 Established to handle appeals in the patent process, post grant review (PGR), inter partes review (IPR), and derivation actions.
 Replaces Board of Patent Appeals and Interferences (BPAI).
 PGR oppositions available for 9 months after issuance of patent.  Only available for patents having an effective filing date (earliest priority date) on or after March 16, 2013.
 PGR Standard – it is “more likely than not” that at least one of the claims challenged is unpatentable.
 IPR and existing ex parte reexaminations available after post-grant review period ends.
 IPR Standard – a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request.
 Transitional Post-Grant Review of Business Method Patents.
 8-year window of time beginning 1 year after the enactment.

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