Major Dates & Deadlines Prompted by the America Invents Act
When President Obama signed into law the Leahy-Smith America Invents Act, several key dates and rule changes were scheduled to go into effect over the next year and a half. These include:
Effective Sept. 16, 2011:
- Restrictions on multi-defendant patent lawsuits: Unrelated defendants can be joined in a single lawsuit only if joint liability exists. Or if the defendants engaged in the same infringingement and there are common questions of fact.
- Unpatentable topics: No patents will be issued covering a tax strategy or a human organism.
- Reduction of qui tam false marking actions: Besides the U.S. government, only those that can show a “competitive injury” can sue for false patent marking. This is a major advance to stop patent lawsuit sharks who were suing without being injured.
- Prior commercial use defense expanded: The enforcement of patents issued on or after Sept. 16 may be subject to a prior commercial use defense.
- Fee setting authority for the USPTO: The US Patent and Trademark Office can set all fees commensurate with its estimated costs. This is expected to reduce most patent fees for “micro-entities” by up to 75 percent.
- Virtual marking: Patent holders may now use virtual patent marks to mark goods and materials.
Effective Sept. 26, 2011
- Fast track patent prosecution: Prioritize examination by paying an extra fee. It is unclear how this will affect individuals and small businesses who seek timely prosecution of their patents.
- Interim surcharge for current patent fees: A 15 percent surcharge will be added to all fees until the USPTO makes a specific fee adjustment.
Effective Nov. 15, 2011:
- New patent application filing fee for non-digital applications: An extra $400 fee is due if the application is not filed electronically.
Effective Sept. 16, 2012:
- Fewer consequences for not presenting advice of counsel at trial: Willful infringement and intent to induce infringement are not proven by the absence of advice of counsel.
- Post-grant review proceedings: Within nine months of a patent’s issuance, a third party can challenge the patent’s validity at the USPTO.
- Transitional procedure for post-grant review of business method patents: Entities alleged to infringe a business method patent may seek post-grant review at the USPTO.
- Supplemental review proceedings by inventor: An inventor may request consideration or correction of information in connection with a patent.
- Assignee can file patent application: An assignee can file a patent application in its own name.
Effective March 16, 2013:
- First-to-file: U.S. patent law shifts to a “first-to-file” system, meaning the first filed application for an invention has priority over later-filed applications. This is a major change
- Expanded definition of prior art: Prior art includes all publicly available information and new types of information from outside the U.S.
- Derivation proceedings at the USPTO: A patent applicant may challenge the ownership of an earlier application derived from the applicant’s work.