America Invents Act (AIA)

Larson & AndersonPatent Law

The following information about the Leahy-Smith America Invents Act (AIA) is general information about the act and is not legal advice which is given only to clients of the firm.

The AIA was signed into law on September 16, 2011. The AIA provides significant changes to US patent law. Larson and Anderson, LLC will be generating a series of short general information articles for publication on this page that provide further insight into the AIA. Please check back periodically as this page will be updated.

Several provisions of the AIA became effective immediately while other provisions are set to be enacted over the course of the next two years. Some of the notable changes to the US patent system are discussed below.

On the date of enactment (e.g. September 15, 2011) the AIA amended 35 USC §287 (e.g. the “False Marking Statute”) to indicate that marking a product with “an expired patent number is not false marking” and requires that any person who brings an action under this section be required to have “suffered a competitive injury” as a result of the false marking. Also on the date of enactment the AIA amended 35 USC §282 to indicate that failure to disclose the “best mode” in accordance with 35 USC §112 shall not be a basis for invalidity or unenforceability of a patent.

On September 16, 2012, the AIA establishes an Inter Parte Review (IPR) procedure (e.g. similar to the previous Inter Partes Reexamination) where a third party may challenge the validity (under only 35 USC §102 or §103) of a claim in a patent after nine months from issue/reissue or after the conclusion of a Post Grant Review. On September 16, 2012 the AIA also creates a procedure for third partes to submit prior art during the examination phase of an application before the USPTO. Furthermore, on September 16, 2012 the AIA establishes a Post-Grant Review (PGR) procedure where a third party may challenge the validity of a claim within nine-months from issue/reissue of a patent. Note the PGR is limited to patents granted from applications filed on or after March 16, 2013 (e.g. patents based on the first-inventor-to-file).

For applications filed on, or after, March 16, 2013, the AIA: redefines what is considered “prior art” for the purposes of examination before the USPTO; redefines the “grace period” from sales, offers for sale, and publications inventors previously enjoyed prior to this date; transitions the US patent system from a first-to-invent system to a first-inventor-to-file system; and establishes derivation proceedings.