Key Takeaways

  • The America Invents Act (AIA) revolutionized U.S. patent law by shifting from a First to Invent to a First Inventor to File system, harmonizing U.S. practices with international standards.
  • The AIA introduced Post-Grant Review (PGR) and Inter Partes Review (IPR) to streamline patent challenges and reduce litigation costs.
  • The Act aimed to reduce patent backlogs and encourage innovation, but critics argue it favors large corporations over individual inventors.
  • Micro entity and small entity provisions reduced fees to promote accessibility for independent inventors and startups.
  • The AIA established new programs such as virtual marking, pro bono patent assistance, and satellite USPTO offices to modernize patent processes and expand outreach.

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.

Historical Context and Legislative Background

The America Invents Act (AIA) marked the culmination of over six years of debate and reform efforts within Congress and the patent community. It was designed to modernize an outdated system and align U.S. patent law with global standards. Before the AIA, the U.S. relied on a "First to Invent" system, which required extensive documentation and disputes over who invented first. This approach caused delays, high litigation costs, and uncertainty.

The Act was signed into law by President Barack Obama on September 16, 2011, after bipartisan support in Congress—passing the House with a 304-117 vote and the Senate with 89-9. President Obama described the reform as a tool to “cut red tape and help entrepreneurs turn ideas into jobs,” emphasizing the link between patent efficiency and economic growth.

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

First-to-File System and Global Alignment

The First Inventor to File rule introduced by the America Invents Act brought the United States in line with the rest of the world’s patent systems. This change simplified the filing process and provided greater predictability for applicants. However, it also increased the pressure to file quickly—potentially disadvantaging small entities with limited resources.

Filing Transparency and Derivation Proceedings

The AIA replaced “interference” proceedings with derivation proceedings, intended to resolve disputes where one applicant allegedly derived an invention from another. This adjustment aimed to balance fairness and efficiency by requiring clear evidence of derivation while removing procedural complexity.

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.

Enhanced Post-Grant and Inter Partes Review

The AIA introduced two new mechanisms—Post-Grant Review (PGR) and Inter Partes Review (IPR)—which streamlined how patents could be challenged.

  • PGR allows a third party to contest a patent’s validity within nine months of issuance on almost any ground of invalidity.
  • IPR, available after the PGR window, focuses on prior art and patentability issues.

These mechanisms aimed to reduce costly court disputes by moving certain challenges into the USPTO’s jurisdiction. The Patent Trial and Appeal Board (PTAB) oversees these reviews, significantly shaping modern patent enforcement.

Pre-Issuance Submissions

Under the AIA, third parties may submit prior art during examination, offering the USPTO more information to ensure only valid patents are granted. This transparency helps prevent overly broad or low-quality patents from entering the system.

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.

Key Provisions

  • 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.

  • Studies

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

Patent Quality and Transparency Measures

Beyond major filing changes, the America Invents Act introduced new safeguards to improve patent quality:

  • Virtual Patent Marking: Allows patent holders to mark products digitally, reducing costs and simplifying updates.
  • False Marking Reform: Eliminated private lawsuits for marking expired patents, curbing frivolous litigation.
  • Human Organism Exclusion: Explicitly bans patents for human organisms, maintaining ethical boundaries in biotechnology.

USPTO Modernization and Accessibility

The AIA granted the USPTO fee-setting authority to improve operations and established regional satellite offices in Detroit, Denver, Dallas, and Silicon Valley. These offices help reduce the backlog and expand services to inventors nationwide.

The Act also led to the creation of the Patent Ombudsman Program and Pro Bono Assistance Program to support independent inventors and small entities, ensuring broader access to the patent system.

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.

Increased Patent Certainty and Efficiency

The AIA provides greater certainty in patent ownership, since the first inventor to file now holds priority. This eliminates lengthy disputes and provides investors with confidence in patent portfolios.

The introduction of PTAB reviews has also enhanced the system’s ability to invalidate weak patents early, reducing litigation costs and fostering stronger intellectual property protection overall.

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.

Concerns About Fairness and Accessibility

Despite its modernization goals, the AIA has been criticized for creating barriers for small inventors. The First-to-File system favors large corporations with in-house counsel and ample resources. Smaller inventors often face financial hurdles and limited time to prepare filings.

Additionally, the Patent Trial and Appeal Board (PTAB) process has faced criticism for favoring challengers—earning it the nickname “patent death squad” among some industry professionals. Critics argue this imbalance discourages innovation among startups and individuals.

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

Strategic Use of Post-Grant Review

Under the AIA, patent owners and third parties can use post-grant mechanisms to clarify patent rights, eliminate weak claims, and strengthen their overall intellectual property position. Businesses now integrate PGR and IPR reviews into their IP strategies—either to defend innovation or challenge competitors’ patents.

Inventors can also leverage micro entity status and prioritized examination programs to accelerate protection at lower cost, making the patent process more accessible to startups and independent creators.

Frequently Asked Questions

  1. What is the main purpose of the America Invents Act?
    The AIA aims to streamline the U.S. patent system, improve patent quality, and align domestic practices with international standards through the First-to-File system.
  2. How does the First-to-File system affect inventors?
    It rewards the first inventor to submit a complete application, emphasizing prompt filing and reducing disputes over invention dates.
  3. What is the role of the Patent Trial and Appeal Board (PTAB)?
    PTAB oversees post-grant and inter partes reviews, serving as a forum to assess patent validity outside of traditional court litigation.
  4. Does the America Invents Act benefit small inventors?
    While micro entity status reduces fees, critics argue that large corporations still have an advantage due to faster filing capabilities and greater legal resources.
  5. How has the AIA impacted patent litigation?
    It has reduced frivolous lawsuits and strengthened patent examination but increased the administrative burden for inventors defending patents at the PTAB level.

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