Intellectual Property Alert: Technical amendments to the America Invents Act

On January 14, 2013, President Obama signed H.R. 6621, which makes a number of technical corrections to the Leahy-Smith America Invents Act (AIA), into law following its passage by 112th Congress just before the end of its just-concluded session.

The AIA, which President Obama signed on September 16, 2011, constitutes the most significant reform of U.S. patent law in the past 60 years. The first of the two phases of reforms, include new inter partes and post-grant review proceedings, “virtual” patent marking and limitations on false marking suits, and third-party submissions, are in place. The final phase, including the transition from a “first to invent” to a “first inventor to file” system, become effective on March 16, 2013. 

H.R. 6621, officially titled “To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code,” includes a number of amendments to correct drafting errors and clarify provisions of the AIA. Notable corrections include:

• Elimination of the post-grant “dead zone”: Elimination of the nine month so-called “dead zone” period for filing inter partes reviews for certain patent applications. As enacted, the AIA effectively precluded both inter partes review and post-grant review for certain patents that issue on or after March 16, 2013. Now, inter partes review may be requested against a patent immediately after issuance, if the corresponding application claims subject matter filed before March 16, 2013, whereas patents issuing from a corresponding application filed on or after March 16, 2013, immediately will be subject to post-grant review. The act also eliminates a “dead zone” for inter partesreview of certain reissue patents.
• Acceptance of inventor’s oath/declaration: The deadline for submitting an inventor’s oath/declaration has been extended through the date of the issue fee payment. Previously, submission of an inventor’s oath/declaration only extended to the period of time before issuance of a Notice of Allowance.
• Advice of counsel concerning the effective date of the AIA: Evidence of a party’s failure to obtain the advice of counsel regarding patent infringement now cannot be used to show intent to induce infringement or willful infringement. This provision applies to any civil action that began on or after March 16, 2013.
• Derivation proceedings and interferences: The time period for initiating a derivation proceeding has been clarified. As clarified, a derivation proceeding must be brought within one year of the publication date or a grant of any relevant claim in the earlier-filed application. The act defines the notion of an “earlier application” when comparing an invention to another application. The act also clarifies that interferences are appealable to the Patent Trial and Appeal Board and Federal Circuit if they are filed after the effective date of the AIA amendments.
• Patent term adjustment: An extension of patent term in certain instances will now apply. Previously, patents received a patent term extension for applications pending more than three years after the filing date. Elimination of the three year period now affords patent term extension from the filing date of an application under 35 U.S.C. §111(a), or start of the U.S. national stage application under section 371. The exclusive remedy for challenging a PTO decision regarding a request for reconsideration of patent term adjustment will be a civil action filed in the U.S. District Court for the Eastern District of Virginia.
• Pending, unpublished pre-GATT patent applications: In addition to these technical amendments, the act includes removal of controversial pre-GATT language. Such language applies to pre-GATT patent applications that previously allowed estoppel for post-grant review challenges to “any ground that the petitioner raised or reasonably could have raised during that post-grant review.”

For more information, please contact:

David B. Cupar
216.430.2036
dcupar@mcdonaldhopkins.com

David T. Movius
216.430.2029
dmovius@mcdonaldhopkins.com

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