AMERICA INVENTS ACT

HOW THE PASSAGE OF THE MOST SWEEPING CHANGES IN PATENT LAW WILL AFFECT YOU.

U.S. Senator Patrick Leahy and Lamar Smith were the lead sponsors in support of the so-called Leahy-Smith America Invents Act (AIA), which was signed into law by U.S. President Barack Obama on September 16, 2011 at Thomas Jefferson High School for Science and Technology in Alexandria, Virginia.

Passed with strong bipartisan support, the AIA represents the most significant reform of U.S. patent law Act in sixty years. Its primary objectives are to boost American companies and inventors who have suffered costly delays and unnecessary litigation, and let them focus instead on innovation and job creation. Several Key Elements of the AIA, are as follows:

1. A Fast Track Option for Patent Processing:
The average current turnaround time for patent application adjudication is on the order of several years. The United States Patent and Trademark Office (USPTO) offers a new fast track option that has a guaranteed 12-month turnaround.
  • Accelerated examinations for qualifying applications are available by paying an additional fee.
2. Reducing the Current Patent Application Backlog:
The additional (financial) resources provided to the USPTO via the AIA will allow the USPTO to continue to combat the backlog for significantly reducing wait times on patent applications.
  • New examiners are being hired to bolster the examination team, and take up examinations on a quicker basis.
3. Increasing Patent Quality:
The USPTO is updating its quality management processes as a means to enhance the quality of the examinations by clarifying and tightening its standards for patent issuance, and provides for an expedited post-grant review processes.
  • Conditions of novelty and obviousness are being overhauled and made dependent upon the effective filing date.
  • The scope of prior art is broadened to include any publication or use, anywhere in the world, prior to the effective filing date, and may be submitted by third parties.
  • Post-grant review proceedings may be requested to address invalidity grounds, including challenges to novelty and obviousness.
4. Patent Prosecution:
The act also provides for enhanced examination procedures, as well as accelerated examinations for qualifying applications. Under the act, an accelerated examination process will be available to applications that are important to the national economy for an additional fee.
The added enhanced examination procedures now include third-party submissions during application examinations, and two new post-grant challenges, are provided. Third parties may now submit prior art publications, including an explanation of the relevance of such publications, to the USPTO during examination of pending applications.
5. Post Patent Review:
The post-grant review can be requested based on any invalidity ground within the first nine months after a patent issues or reissues, and an inter partes review may be initiated after the completion of the post-grant review to address challenges raised under section 102 or 103.
6. Patent Litigation:
Another significant change to patent litigation is eliminating the ability for anyone to bring a false marking lawsuit under 35 U.S.C. Section 292 by awarding damages only to the United States and those who can prove competitive injury.
The prior commercial use defense to infringement is broadened so that it extends worldwide to commercial use of any subject matter under the act at least one year before the effective filing date of the patent application.

The particular changes in U.S. patent law enacted by way of the AIA as outlined above may obscure the driving policy behind the changes, and thus the patent law forest can very easily be lost for the patent law trees. For example, the primary change that will become the law of the land on March 16, 2013 is a switch from a “First to Invent” system to a “First Inventor to File” system. Opponents to the AIA view this particular change as a monstrous intrusion on the rights of smaller independent inventors and businesses who may not have the means to quickly file patent applications ahead of larger entities in the race to the USPTO. Opponents of the AIA thus fear that the smaller inventor/business organization will become victimized by the AIA.

Meroni & Meroni, P.C. is a firm that specializes in the patent rights of smaller inventors/business organizations. Accordingly, it is the primary goal of Meroni & Meroni, P.C. to keep in view the overarching policy of the AIA and apply that policy to its practice in a manner that will serve its clients’ best interests. Recall that the AIA is driven by the promise to enhance patent strength and validity through ever-increasing examination efficiency. Protections have been built into the AIA for the benefit o the smaller inventor/business organization, and thus many of fears espoused by opponents to the AIA are alarmist. In view of the primary policy perspectives, the smaller inventor should well consider Meroni & Meroni, P.C. as a firm that will operate to promote and protect the interests of the smaller inventor/business organization.

If you care to learn more about how the AIA might affect your patent rights, we would invite you to contact our office at your earliest convenience.

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