America Invents Act: Everything You Need to KnowPatent Law ResourcesHow to Patent an IdeaProvisional PatentPatent PendingDesign PatentPlant PatentUtility Patent
The America Invents Act (AIA) adopts a First to File approach to the U.S. patent statute. This legislation prioritizes patent filing date over invention date.6 min read
What Is the America Invents Act?
The America Invents Act (AIA) adopts a First to File approach to the United States patent statute for patents such as a utility patent. This patent reform legislation prioritizes patent filing date over invention date.
Also known as the Leahy-Smith America Invents Act, it was signed into law on September 16, 2011. The AIA went into effect on March 16, 2013. It's considered the biggest change for the United States Patent and Trademark Office (USPTO) since 1952.
The AIA is officially known as H.R. 1249. It amends Chapter 35 of the U.S. Code. Sen. Patrick Leahy (D-VT) and Rep. Lamar Smith (R-TX) sponsored the AIA.
Key Filing Reforms
- First Inventor to File
The first inventor to file a patent application for a unique invention or design now receives priority. A USPTO "derivation proceeding" replaces the earlier "interference proceeding," and is used to settle challenges on whether another applicant can get a patent for a similar design or invention. A derivation proceeding requires the challenger to carry the burden of proof and applies to applications with priority claims on or after March 16, 2013. It must be filed within one year of the first publication of a claim to a similar invention.
- Corporate Assignee Filing
A corporate assignee can now apply for a patent. In the past, only individuals could apply for patent protection.
- Best Mode
A patent application has to explain the best mode of using or carrying out an invention. If you fail to include this, your application can no longer be canceled.
- Micro Entity Status
Inventors can now apply with a micro entity status. This includes a 75 percent reduction in standard patent fees. Inventors have to meet the status requirements and submit a certification form before filing the patent application. Under the new requirements an inventor must:
- Qualify as a small entity
- Be listed as an inventor on fewer than five other provisional or non-provisional patent applications
- Have a gross income less than three times the median household income
- Not have assigned, licensed, or conveyed patent ownership to an entity with a gross income more than three times the median household income
Key Examination Reforms
- Prior Art
Prior art refers to preexisting inventions or similar products on sale or available to the public. Any third party can submit prior art, such as a patent, patent application, or published material for consideration in a patent application.
- Expanded Prior User Rights
These rights now include any process, machine, manufacture, or composition of matter. Expanded prior user rights apply where the use was at least one year prior to the patent applicant's filing date or the date that the invention was disclosed to the public for the prior art exception.
- Inventor Grace Period
Publication of a claimed invention by the inventor less than one year prior to the filing of a patent application may no longer serve as prior art.
- Post Grant Review (PGR)
Anyone can now challenge a patent filed under the AIA. The petitioner has to request a PGR within nine months of the patent issue. The request has to show that at least one claim isn't patentable. Only petitioners who haven't already filed a court action to challenge the patent can file a PGR. This costs at least $30,000 and takes about 12 to 18 months to resolve.
- Inter Partes Review (IPR)
Anyone can now challenge a patent after the window for a PGR has passed. A petitioner can request an IPR more than nine months following the patent issue. This is a trial proceeding. An IPR costs at least $23,000 and takes about 12 to 18 months to resolve.
- Covered Business Method Review (CBM)
Certain parties can now request a PGR to confirm the validity of covered business method patents. Only a party sued for infringement can request this type of CBM Review.
- Supplemental Examination
A patent owner can now request a Supplemental Examination. This relates to reconsidering or correcting information to a patent.
If the Supplemental Examination brings up a Substantial New Question of Patentability (SNQP), a third party can now request an Ex Parte Reexamination. The challenger can remain anonymous. An Ex Parte Reexamination costs around $17,000, and the resolution can take several years.
- Prioritized Examination
Applicants can now request a Prioritized Examination for a full utility or design patent. This expedited status applies to patents for technology that enhances American competitiveness. This costs $4,800 for large entities, $2,400 for small entities, and $1,200 for micro entities.
- Defense to Infringement
Prior commercial use may now be used as defense in a patent infringement case, even if the commercial use took place more than a year prior to the new patent's application filing date. This applies to new patents issued on or after September 16, 2011.
- Joinder of Defendant
Circumstances for joinder of defendants in patent infringement cases are now limited.
Key Fee Reforms
- 15 Percent Fee Increase
Many patent filing and maintenance fees increase by 15 percent.
- Fee for Paper Filing
Applicants have to pay up to $400 extra to file on paper. There's no extra fee for electronic filing.
- USPTO Fee Structure
The USPTO Director receives authority to determine fees for patent services.
- USPTO Reserve Fund
A Reserve Fund will now serve as a depository for fees collected by the USPTO in excess of the office's annual appropriations. Funds may only be used for office operations and can be accessed by Congressional approval. Fees related to patent services must be used for patent-related expenses.
- Changes to General Declaration and Oath
Inventors no longer have to state that they're the first known inventor. They can also leave their country of citizenship off the form.
- Virtual Marking
Patent owners can apply virtual marks to patented goods. They have to include a URL for a website with information about the patent.
- False Marking
Listing an expired patent is no longer a violation of the patent statute. Statutory damages can only be awarded if the U.S. government challenges the marking.
- Human Organism Patents
Inventors may not apply for patents related to human organisms. This new provision doesn't apply to previously issued patents.
- Tax Strategy Patents
Strategies related to reducing, avoiding, or deferring tax liability are now considered insufficient to distinguish a claimed invention from prior art.
- Satellite Offices
Within three years of enactment of the AIA, the USPTO must establish three or more satellite offices. The following satellite offices have been designated:
- Detroit, Michigan: Opened July 13, 2012
- Dallas, Texas
- Denver, Colorado
- Silicon Valley, California
- Creation of Ombudsman
The USPTO must establish a Patent Ombudsman Program. This will support patent services for small businesses and independent inventors.
- Pro Bono Program
The USPTO must create pro bono programs for patent services. This program will provide assistance to intellectual property law associations around the nation.
Congress has developed several studies on the patent system, including:
- Effects of First-Inventor-To-File on Small Business
- Prior User Rights
- Implementation of the AIA
- International Protection for Small Business
- Genetic Diagnostic Testing
- Patent Litigation
Advantages of the America Invents Act
- It Aligns U.S. Patent Law With Policies Around the World
Most nations have a First to File approach to patent applications. As of March 16, 2013, the U.S. does, too.
- It Lowers Patent Application Filing Costs for Individual Inventors
The new Micro Entity status applies to many individual inventors. This status includes a 75% reduction in patent filing, issue, and maintenance fees.
- It Benefits Large Businesses
Large entities can prioritize patent applications. They can plan for long patent application processes. They can also afford to pay for appeals and post-grant reviews and examinations.
Disadvantages of the America Invents Act
- It Doesn't Make Patents Much More Affordable
Under the AIA, some patent fees are reduced. The highest cost is still hiring an attorney. Since most applicants still hire lawyers, the process isn't more affordable under the AIA. Individual inventors and small businesses still face barriers to filing patent applications.
- It Removes the Focus on Inventors
For decades, U.S. patent law took a First to Invent approach. Under the AIA, the USPTO places filing before innovation.
- It's Less Transparent
The Patent Trial and Appeals Board (PTAB) handles trials and post-grant examinations. Not all are open to the public, which makes the process less transparent. This tends to hurt small inventors more than large entities.
Examples of What You Can Do Under the America Invents Act
- File as a Corporate Assignee
- File as a Micro Entity
- Expedite a Patent Application
- Challenge a Patent Through a PGR, IPR, or Ex Parte Reexamination
Frequently Asked Questions
- When Do AIA Reforms Take Effect?
Some took effect right away in September 2011. Others took effect in September 2012, and the final group took effect in March 2013.
- Do All Co-Inventors Have to Have Micro Entity Status?
To file as a micro entity and pay the lower fees, all listed inventors must submit a Certification of Micro Entity Status.
- Is a Patent Attorney Necessary?
You aren't required to work with a patent attorney. Most inventors find it helpful to hire an attorney, though. From filing the application to requesting an examination to issuing the patent, an attorney provides invaluable assistance.
If you need help with filing a patent application, you can post your question or concern on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.