Corrections to America Invents Act Signed Into Law

Corrections to the America Invents Act (the sweeping change to America’s patent system) were signed into law by President Obama on Monday, January 14, 2013. H.R. 6621, entitled “To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code,” rapidly progressed through the House and the Senate in little more than a month from its introduction. Key changes contained in this bill include:

• clarifying the calculation for patent term adjustment, and when it should be calculated;
• making inter partes review available for patents having an effective filing date before March 16, 2013, thus eliminating the 9 month “dead-zone”;
• extending the time for filing the inventor’s oath or declaration until the payment of the issue fee;
• clarifying the standards for initiating derivation proceedings; and
• giving the PTO more discretion in how it spends fees received.

1. Clarification Of The Starting Point For Patent Term Adjustment
   • H.R. 6621 makes clear that patent term adjustment (“PTA”) accumulates only on “commencement of the national stage under section 371 in an international application.” Previously, the AIA provided that PTA accumulation began with the filing date of an international PCT application that is later followed by a US national stage application. The Bill further requires that the PTA calculation occur at issuance as opposed to the earlier notice of allowance. The change in timing for the PTA calculation allows only one opportunity to protest a PTA calculation, within two months of the patent issue date.
2. Elimination Of The 9 Month “Dead Zone”
   • The AIA replaced inter partes reexamination with two new administrative review processes: 1) post grant review; and 2) inter partes review. Under the AIA, an issued patent may be challenged immediately through post-grant review only within the first 9 months after issuance. After this 9 month period (or after the conclusion of a post grant review initiated during these 9 months), a third party can challenge the patent through inter partes review.
   • Post grant review, however, is not available for any patent having an effective filing date of before March 16, 2013. Thus, prior to H.R. 6621, a patent filed before this effective filing date would be subject to a 9 month “dead zone,” meaning that it could not be challenged either under post grant review or, for the first 9 months after issuance, under inter partes review.
   • H.R. 6621 eliminates this “dead zone” by amending the AIA to recite that the 9 month delay for inter partes review does not apply to any patent having an effective filing date before March 16, 2013. Inter partes review now will be immediately available for these patents.
3. Extension Of The Period For Submitting An Inventor’s Oath
   • The AIA, at section 115(f), requires the submission of an oath, substitute statement, or sufficient assignment prior to the notice of allowance of a patent application. H.R. 6621 extends the timeline to pay to “no later than the date on which the issue fee … is paid.” Thus, the USPTO can now issue a Notice of Allowance without having an inventor’s oath or declaration on file.
4. Clarification Of The Time Frame For Bringing Derivation Proceedings
   • Derivation proceedings were created by the AIA and will replace interference proceedings. Briefly, derivation procedures allow for the correction of inventorship in an earlier filed application for an invention that was derived from the filer of a later application. H.R. 6621 clarifies that a derivation proceeding must be initiated within one year of the publication or grant of a relevant claim in the earlier-filed application.
5. PTO Now Has Discretion In Use Of Fees
   • The AIA provides that fees collected for patents be used in connection with the “administrative costs of the Office relating to patents” and that fees collected for trademarks be in connection with “administrative costs of the Office relating to trademarks.” H.R. 6621 eliminates this distinction, allowing the USPTO to use any fees collected on either patent or trademark operations.
6. What Was Not Addressed
   • During his presentation to the Senate, Senator Patrick Leahy hailed H.R. 6621 as an effort “to improve the law and help streamline its implementation.” He noted, however, several areas that he felt could still be addressed to improve the AIA, including correction of (1) an “inadvertent scrivener’s error” that created a higher threshold of post grant review estoppel than what he believed Congress had originally intended, and (2) the “troubling problem” of pre-GATT patent applications that have been pending for over 18 years. Currently, these latter applications are entitled to a patent term of 17 years from issuance, should they issue as patents.