Share This Article


Big Changes Coming to Patent Law

On September 16, 2011, President Obama signed the America Invents Act (the “AIA”) into law. The AIA makes the most sweeping changes to U.S. patent law in many years, including moving the United States towards a first-to-file system, creating new Patent Office proceedings for post-grant review, essentially eliminating false marking actions, raising patent fees and establishing a new fee-based fast track patent examination process.

Move to First to File System

The most significant change brought about by the AIA is to move the United States to a first-to-file system, which is the system used in most other countries. Currently, the United States operates on a first-to-invent system, that is, an inventor who diligently works on reducing his or her invention to practice by building a prototype and/or filing a patent application is entitled to the date of conception as the “priority date,” so long as that inventor did not abandon, suppress or conceal the invention. In a first-to-file system, priority belongs to the inventor who first files a patent application, regardless of the date of conception of the invention. In view of the changes, inventive companies would be well served by filing applications as early as possible.

New Procedures for Post-Grant Review

The AIA provides a nine-month window for challenging a newly issued patent on any ground. This new provision will take effect one year after the date of enactment for certain business method patents, but otherwise will apply only to applications with priority claims that fall 18 months after the date of enactment. Review may be granted upon a showing that it is more likely than not that at least one of the challenged claims is unpatentable, which is a big change from the former standard, which only required that a substantial new question of patentability be established.

The AIA also provides a new Inter Partes review procedure for reviewing granted patents that will replace Inter Partes reexamination. Under this new provision, patents can be challenged on the basis of patents or printed publications only, after the window for post-grant review has passed (or after a given post-grant review proceeding is completed). This new provision will take effect in one year, but will be available to challenge patents issued before its effective date. Notably, the pre-AIA threshold to grant an inter partes reexamination of a “substantial new question of patentability” will be replaced with a higher threshold requiring that the Patent Office find a “reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.”

Other Changes

  • Effective immediately, the AIA eliminates qui tam actions for false marking patent suits. Under the new law, only the U.S. government can sue for statutory damages, although persons who have suffered a “competitive injury” from false marking can bring a civil action for damages “adequate to compensate for the injury.” The new law also provides that marking with an expired patent is not a violation of the statute. Under the new law, virtually all pending false marking suits will need to be dismissed.
  • Effective immediately, the failure to disclose the best mode for carrying out the invention in a patent application will not be a basis for invalidating a patent.
  • Effective immediately and applicable to pending applications, patents will not be granted to “tax strategy patents” or to claims encompassing human organisms.
  • Effective in 10 days, a 15-percent surcharge will be added to all patent-related fees, including patent maintenance fees.
  • Effective in 10 days, the USPTO will be authorized to proceed with a new fee-based prioritized examination system, and to charge a $4,800 fee for large entities ($2,400 for small entities).

This overview highlights key changes to the patent system that will be brought about by the AIA, but the AIA includes many other important changes. These are the largest changes to the patent laws in over fifty years and we plan to highlight a number of the new provisions in future articles. In the meanwhile, contact Joseph S. Heino ( at 414-225-1452 or your Davis & Kuelthau attorney with any questions regarding the proposed changes to the Patent Laws.