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    America Invents Act (AIA) Legal Analysis and Resources

    To find out more about the Leahy-Smith America Invents Act (AIA), please contact Patrick Doody or the Pillsbury attorney with whom you regularly work.

    Pillsbury has been monitoring the progress of the Leahy-Smith America Invents Act (AIA) legislation. Now that the President has signed the AIA into law on September 16, 2011, we will update this page with new legal analysis, presentations, commentary and informative resources to help our clients understand and leverage the changes presented in the new law.

    January 3, 2013
    AIA Correction Bill
    On December 28, 2012, the Senate passed an amendment correcting certain portions of the AIA, and the House approved the amendment via voice vote on Tuesday, January 1, 2013. The amendment will permit inter partes review of patents issuing today, without having to wait the 9 month period. As originally drafted, Section 311(c) of Title 35 permitted inter partes review only after a 9 month waiting period, which was intended to apply only to patents issuing from applications filed after March 16, 2013 (e.g., to which Section 3(n)(1) of the AIA applied). The amendment corrects the AIA so that patents that are not subject to Section 3(n)(1) of the AIA may now be subject to inter partes review immediately upon issuance.

    Another correction made by the amendment was to clarify the time on which a petition for Derivation may be filed. The AIA as drafted was not entirely clear, but the amendment makes it clear that the period for filing a petition for derivation is within one year of the earlier patent’s grant or within one year from publication of the earlier application, whichever is earlier.

    A copy of the amendment can be found here.

    December 20, 2012
    Final Rules for Changes to Implement Micro Entity Status for Paying Patent Fees
    Yesterday, the United States Patent and Trademark Office issued its final rules for Changes to Implement Micro Entity Status for Paying Patent Fees. The rules provide for the filing of a certificate of micro entity status once during the pendency of a patent application and patent, and the payment of micro entity fees can be made so long as micro entity status applies when the fee is paid. 35 U.S.C. §123(a) defines a “micro entity” as

    an applicant who makes a certification that the applicant: (1) qualifies as a small entity as defined in 37 CFR 1.27; (2) has not been named as an inventor on more than four previously filed patent applications, other than applications filed in another country, provisional applications under 35 U.S.C. 111(b), or international applications for which the basic national fee under 35 U.S.C. 41(a) was not paid; (3) did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986 (26 U.S.C. 61(a)), exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census; and (4) has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income, as defined in section 61(a) of the Internal Revenue Code of 1986, exceeding three times the median household income for that preceding calendar year, as most recently reported by the Bureau of the Census. See 125 Stat. at 318.

    August 14, 2012
    Final Rules Published
    On August 14, 2012, United States Patent and Trademark Office published final rules in the Federal Register implementing the inventor’s oath or declaration, supplemental examination, inter partes review, post grant review, and covered business method review provisions.  The final rules as published in the Federal Register are attached.

    August 7, 2012
    Final rules on Changes to Implement Miscellaneous Post Patent Provisions of the AIA
    The Leahy-Smith America Invents Act (AIA) expands the scope of information that any party may cite in a patent file to include written statements of a patent owner filed in a proceeding before a Federal court or the United States Patent and Trademark Office (Office) regarding the scope of any claim of the patent, and provides for how such information may be considered in ex parte reexamination, inter partes review, and post grant review. The AIA also provides for an estoppel that may attach with respect to the filing of an ex parte reexamination request subsequent to a final written decision in an inter partes review or post grant review proceeding. The Office is revising the rules of practice to implement these post-patent provisions, as well as other miscellaneous provisions, of the AIA. We are providing the final rules published on August 6, 2012 by the USPTO entitled: Changes to Implement Miscellaneous Post Patent Provisions of the AIA. Please click here to access the PDF file for your viewing.

    February 13, 2012
    We have provided the Federal Register publication for the USPTO's proposed rules for Supplemental Examinations under the America Invents Act. Written comments on the proposed rules are due on or before March 26, 2012. The rules are scheduled to go into effect prior to September 16, 2012, at which point patentees can file requests for supplemental examination.

    February 10, 2012
    We have provided below the Federal Register Publication of the New Rules for Trials at the USPTO:

    Written comments are due on the following dates:

    • Rules of Practice for Trials - April 9, 2012;
    • Practice Guide - April 9, 2012;
    • Inter Partes Review - April 10, 2012;
    • Post Grant Review - April 10, 2012;
    • Transitional Program for "Covered Business Methods" - April 10, 2012;
    • Definition of Technological Inventions - April 10, 2012; and
    • Derivation Proceedings - April 10, 2012

    February 9, 2012
    We have provided below a compilation of the proposed new rules, which form Part 42 of Title 37 of the Code of Federal Regulations, and Part 90. Please click here to access the PDF file for your viewing.

    January 25, 2012
    Proposed Rules and Request for Comments
    On January 25, the United States Patent and Trademark Office (PTO) published in the Federal Register its Supplemental Examination Proposed Rule (77 Fed. Reg. 3666, January 25, 2012), and a Request for Comments and Notice of Public Hearings on Genetic Diagnostic Testing (77 Fed. Reg. 3748, January 25, 2012).

    Written comments addressing the Supplemental Examination proposed rules are due on or before March 26, 2012. Some interesting aspects of the proposed rules are as follows. The request for Supplemental Examination must be submitted by the patent owner and is limited to only 10 items. If more than 10 items need to be submitted, then multiple request may be filed. But, each supplemental examination must be accompanied by a $5,180 processing fee, and a fee of $16,120 for conducting ex parte reexamination (that fee will be refunded if no reexamination is ordered). These are estimated fees for fiscal 2013. In addition, petitions filed in ex parte reexaminations will cost $1,930. There are many other interesting aspects of the rules, including no interviews during supplemental examination (although interviews are permissible in ex parte reexamination), if the PTO becomes aware of material fraud the matter will be referred to the US Attorney General, and others.

    The PTO will hold public hearings on genetic diagnostic testing for purposes of preparing a report on the subject as required by the AIA. The first hearing will be held at the PTO's office in Alexandria, Va, on Thursday, February 16, 2012, and the second hearing will be held in San Diego, California on March 9, 2012. Written comments are due by March 26, 2012.

    Copies of the Federal Register publications are linked below:

    January 17, 2012
    Reports Required by the America Invents Act
    The Leahy-Smith America Invents Act included a number of provisions that required certain entities to submit reports to Congress on various topics that impacted patent reform. The United States Patent and Trademark Office issued two reports today, both of which are attached:

    January 9, 2012
    The United States Patent and Trademark Office (PTO) issued 4 proposed rules for implementing certain provisions of the AIA. We have attached the following proposed rules for your review.

    We also provide below the AIA roadshow schedule excerpted from the PTO web site. The PTO will have issued its regulations for the contested cases provisions (Post Grant Review, Inter Partes Review, Derivative Actions) and will discuss them at the roadshows.

    AIA Roadshow Schedule 2012
    The USPTO has planned series of cross-country roadshows to discuss our proposed rules implementing various provisions of the AIA. The proposed rules to be covered include: (i) the OED statute of limitations, (ii) inventor's oath and declaration, (iii) third party submission of prior art in a patent application, (iv) citation of prior art in a patent file, (v) supplemental examination, (vi) post-grant review, (vii) inter partes review, (viii) the transitional program for covered business methods, and (ix) derivation. The proposed rules for (i) to (iv) published in the Federal Register on January 5 and 6, 2012, and the proposed rules for (v) to (ix) are expected to publish in the Federal Register in mid- to late January 2012.

    Details about the locations and agenda appear below.

    Friday, February 17: USPTO Campus - Alexandria, VA

    Friday, February 24: Sunnyvale Public Library - Sunnyvale, CA

    Monday, February 27: Marriott Library, University of Utah - Salt Lake City, UT

    Wednesday, February 29: Dallas Public Library - Dallas, TX

    Friday, March 2: Broward County Main Library - Ft. Lauderdale, FL

    Monday, March 5: Boston Public Library - Boston, MA

    Wednesday, March 7: Chicago Public Library - Chicago, IL

    Roadshow Agenda
    10:00 AM – 10:30 AM  Welcoming Remarks
    10:30 AM – 11:15 AM  Patent Related Provisions
    11:15 AM – 11:30 AM  Break
    11:30 AM – 12:30 PM  Patent Related Provisions
    12:30 PM –  1:30 PM  Lunch
     1:30 PM –  3:00 PM  Contested Case Provisions
     3:00 PM –  3:15 PM  Break
     3:15 PM –  4:30 PM  Contested Case Provisions

    November 3, 2011
    Markup of the United States Code as Modified By the Leahy-Smith America Invents Act
    We have provided a markup of the United States Code as Modified By the Leahy-Smith America Invents Act. Please click here to access the PDF file for your viewing.

    October 6, 2011
    Client Alert—How the America Invents Act Impacts Inventions Made with Government Funds
    On September 16, 2011, President Obama signed into law the Leahy-Smith America Invents Act, H.R. 1249 (the "AIA"), a landmark patent-reform bill with far-reaching effects on U.S. patent law. The AIA's provisions take effect at various times, ranging from the date of enactment to 18 months thereafter. This advisory addresses three provisions of the AIA of which government contractors and others using government funds to invent should be mindful.

    September 21, 2011
    America Invents Act: Impact on the Financial Services Industry
    The America Invents Act includes a number of significant changes in the financial services industry. We have provided a high-level summary of some of the important changes for financial services business entities.

    September 16, 2011
    Top 10 Things You Need to Know About the AIA (PDF)
    You can choose to sift through the hundreds of pages of legislation that comprise the America Invents Act (AIA) on your own, or you can let Pillsbury do that work for you! Our attorneys have been monitoring the progress of the AIA since its inception and understand what important changes are on the horizon. This presentation highlights the Top 10 changes and considerations that you need to be thinking about now, so that your legal and R&D teams are ready to comply with these changes—without missing a beat.

    Click here to watch our recent presentation on this topic

    September 8, 2011
    American Invents Act passes the Senate
    On September 8, the Senate voted 89 to 9 to pass HR1249, meaning the bill passed and should be signed into law by the President soon. Three amendments were proposed and at least one of those amendments was tabled.

    September 6, 2011
    Senate votes to move ahead with America Invents Act 93-5
    On September 6, the United States Senate voted on the motion to end debate on the House's version of the America Invents Act, HR 1249, and approved the motion by a vote of 93-5. The House version was passed on June 23, 2011, together with some amendments including a manager's amendment changing the fee diversion portion of the bill. The cloture vote today means the Senate will now vote on the passage of HR1249, which is expected to take place tomorrow, Wednesday, September 7, 2011.
    September 6, 2011
    Intellectual Property News Flash
    The Senate is scheduled to vote today for cloture on the House of Representative's version of the America Invents Act (AIA), together with the amendments passed by the House a few months ago. 60 votes will be required for cloture, and if passed, there will be debate and then a vote, which at that time will only require a majority of the Senate voting yea. If the cloture vote passes, then it is expected that the Senate will approve the House version after debate, and the AIA will be sent to the President for signature. If there are amendments to the House version, then the bill will be sent back to the House for a vote. Most expect the cloture vote to pass and the President to sign the AIA into law soon.

    The most sweeping change in the AIA is ending the first-to-invent system that presently exists in the United States. More than 45 years ago, President Johnson's Commission on the Patent System recommended changing the US system to a first to file system, and for the past decade, the United States was the only country in the world with a first to invent system. Every major patent reform initiative since the 1966 Commision Report recommendation has attempted to make this change, and it now is on the brink of becoming law. The first-to-file system will become effective 18 months after the bill is signed into law.

    The vote is expected for late this afternoon. More to follow.

    August 4, 2011
    Senate to Vote on America Invents Act After Summer Recess
    On Tuesday, August 2, 2011, Sen. Harry Reid filed cloture on a motion to proceed to consider HR 1249, the America Invents Act (AIA). The Senate therefore agreed to end debate and will vote on HR 1249 (the Senate passed its version of the AIA earlier this year) when it reconvenes on September 6, 2011.

    One of the more controversial portions of the AIA concerned the fees the United States Patent and Trademark Office (PTO) collects. Presently, the PTO collects fees from patent applicants, including fees to maintain issued patents, but the money is appropriated through Congress and has often been used to fund other government programs (this is known as "fee diversion"). The Senate version of the AIA completely wiped out fee diversion and allows the PTO to keep all the fees it collects. The House version, HR1249, was amended by Rep. Lamar's manager's amendment to place the fees in a separate account to be used only to fund the PTO, thus requiring the PTO to come in front of Congress to appropriate the funds to the PTO.  The two versions will need to be reconciled prior to passage of the AIA.

    June 23, 2011
    House Passes Amended HR1249
    Following two days of debate, the House of Representatives approved HR 1249, the America Invents Act, by a vote of 304 to 117, as amended by the amendments adopted during the hearings today. Significant amendments that were not adopted today included an amendment to strike the section of the bill that provides for a provisional post-grant review process for business-method patents, as well as an amendment to strike the first to file provisions of the bill.

    The Senate passed its version of the America Invents Act, S.23, back in March. The next step will be to reconcile the two bills, and pass the final bill.

    June 22, 2011
    America Invents Act Debate on House Floor
    Today, the America Invents Act (AIA) was the subject of a debate on the House floor. The Senate passed its version of the bill, S.23: Patent Reform Act of 2011 in March, and the House voted its version of the bill HR 1249 out of committee in April. The House has not yet voted on the bill, although it was placed on the calendar June 1 for a vote sometime this month.

    The subject of the debate yesterday centered on the bill's fee diversion provisions, which, as proposed, will end the practice that exists today in which fees collected by the Patent Office are diverted to general revenue that can be used for other government activities. Some have argued that this fee diversion removes Congressional oversight of a governmental agency.

    Representative Lamar Smith, who introduced the bill in March, drafted a manager's amendment that would place the fees the Patent Office collects into an account for use by the Patent Office, while maintaining the Congressional oversight by requiring the Patent Office to still go through the appropriations process.

    No vote on HR 1249 took place, but a roll call was set for today, presumably to vote on the proposed amendment from Lamar Smith.

    June 2011
    This May Be the Year that Patent Reform Passes Congress
    Hayden Gregory, legislative consultant for the ABA Section of Intellectual Property Law, believes that this may finally be the year—after six years of failed attempts—that Congress finally passes significant patent law reform. In his article, “Crossing the Finish Line on Patent Law Reform,” published in the May/June 2011 issue of Landslide, Mr. Gregory sets out multiple reasons why the likelihood of passage is so much greater than for prior sessions of Congress.

    Foremost among the reasons is the “helping hand” provided by the courts. Starting with the Supreme Court’s 2006 decision in eBay Inc. v. MercExchange L.L.C., 547 U.S. 288 (2006), that an injunction should not automatically issue based on a finding of patent infringement, the courts have taken an active role in clearing up issues that have previously proven intractable, including injunctions, apportionment of damages, punitive damages and venue. When the Executive Branch weighed in with strong support for patent law reform, Congress had additional motivation to move the reform bills forward.

    Prior bills also got bogged down when efforts to end diversion of USPTO user fees were included, as House and Senate appropriators rejected efforts to invade their domain. This time the White House supported these efforts, and an end to fee diversion has become a unifying factor rather than a divisive one in Congress. When measures to bar patenting of tax strategies and to limit false patent marking were added, support for reform grew rather than diminished. Moreover, the re-packaging of the bill as the “America Invents Act” was significant—the reasoning being: how could any member of the Senate vote against a bill identified as an economic development bill when “job” or “jobs” was repeated more than 140 times during debate on the bill? With momentum clearly swinging in favor of reform, the Senate ultimately voted 95 to 5 in favor of final passage. Now it is up to the House to finish the race, and the same factors that pushed the Senate to near unanimity seem likely to carry reform through the House to the President’s desk.

    News and Resources

    Law360 article, “House To Debate Diversion Of USPTO Fees”

    H.R. 1249: America Invents Act on GovTrack

    Presentation: “Post-Grant Proceedings at the Patent Office After Passage of the America Invents Act”

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