USPTO Implementation of the

America Invents ActRobert W. Bahr

Associate Commissioner for Patent Examination Policy, Acting

USPTO

IP Law SummitSept. 15-17, 2011

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Organization

Task Force

Core Team

Patent Working

Group

BPAI Working

Group

Finance Working

Group

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Group 1 Rulemakings and Other Actions(60-Day and Under Effective Dates) (a.k.a. G1 Rulemakings)

Date of Enactment 10 Days After Date of Enactment

60 Days After Date of

Enactment

October 1, 2011

• Reexamination transition for threshold

• Tax strategies are deemed within the prior art

• Best mode• Human organism prohibition• Patent term extension for

drugs• Virtual and false marking• Venue change from DDC to

EDVA for suits brought under 35 U.S.C. §§ 32, 145, 146, 154 (b)(4)(A), and 293

• OED Statute of Limitations • Fee Setting Authority• Establishment of micro-entity

• Prioritized examination

• 15% transition surcharge

Electronic filing incentive

Reserve fund

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Group 1 Rulemakings

• Reexamination Transition for Threshold– Threshold for initiating an inter partes

reexamination is elevated from “substantial new question of patentability to “reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged”

• Tax Strategies are Deemed Within the Prior Art– Any strategy for reducing, avoiding, deferring tax

liability, whether known or unknown at the time of invention or application for patent, is insufficient to differentiate an invention from the prior art

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Group 1 Rulemakings

• Best Mode– Failure to disclose best mode is no longer a basis

on which a claim may be cancelled or held invalid or otherwise unenforceable

• Human Organism Prohibition– Codifies “Weldon Amendment” to prohibit issuance

of a patent on “a claim directed to or encompassing a human organism”

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Group 1 Rulemakings

• Patent Term Extension for Drugs– Applies to any application for extension that is

pending, filed after, or which a decision regarding the application is subject to judicial review on the date of enactment

• Virtual and False Markings– Provides for virtual markings by posting

information on Internet– Applies to all future infringement cases– Civil suits re false markings limited to persons who

suffer a competitive injury

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Group 1 Rulemakings

• Fee Setting Authority– Authority for Director to set or adjust by rule any

fee established, authorized or charged under Title 35– Authority is subject to 7-year sunset clause– Defines micro-entity– Provides for input by USPTO’s advisory

committees, public comment and a Congressional comment period

– Requires additional $400 fee (50% reduction to small entities) for patent applications not filed electronically

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Group 1 Rulemakings

• Establishment of Micro-entity– Director defines micro-entity– sets income limits, annual income limits and any

other limits– Includes universities– Provides for 75% reduction of fees

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Group 2 Rulemakings(12-Month Effective Date) (a.k.a. G2 Rulemakings)

• Inventor’s oath/declaration • Third party submission of prior art for patent application• Supplemental examination• Citation of prior art in a patent file• Priority examination for important technologies• Inter partes review• Post-grant review• Transitional post-grant review program for covered

business method patents

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Group 2 Rulemakings

• Inventor Oath or Declaration– Provides for assignee filing when the inventor is unable

or unwilling to do so– Removes the requirement for statements of lack of

deceptive intent for reissues– Eliminates citizenship requirement

• Third Party Submission of Prior Art– Third party submission of printed publications – Must be made before the earlier of (i) a notice of

allowance or (ii) the later of six months after publication of the application or the date of first rejection

– Must be accompanied by fee and a concise description of asserted relevance of the submitted document

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Group 2 Rulemakings

• Supplemental Examination– Process for patent owner to request supplemental

examination of a patent– If determination of “substantial new question of

patentability” raised, the Director must order an ex parte reexamination proceeding

– Patent shall not be held unenforceable in litigation on the basis of conduct relating to information in a supplemental examination if such is concluded before the date an action is brought

– If the Director becomes aware of fraud during a supplemental examination, the Director may take appropriate action and must refer the matter to the Attorney General

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Group 2 Rulemakings

• Citation of Prior Art in a Patent File– Expands 35 U.S.C. § 301 and allows a patent

owner to file written statements in a proceeding before a Federal Court or the Office taking a position on the scope of a claim

• Priority Examination for Important Technologies– Authorizes Director to provide for prioritized

examination of patent applications for products, processes, or technologies that are important to the national economy or national competitiveness

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Group 2 Rulemakings

• Inter Partes Review– Replaces “optional inter partes reexamination”– Conducted by Patent Trial and Appeal Board within 1 year

(with possible 6-month extension for good cause)– Available for life of patent after later of 9 months from grant

or termination of post-grant review– Not available if filed more than 1 year after service of

infringement complaint or if petitioner previously filed DJ action alleging invalidity

– Basis limited to patents or printed publications– Provides for intervening rights regarding any new or

amended claims– Threshold showing is “reasonable likelihood” that the

petitioner will prevail– Estoppel standard is “raised or reasonably could have

raised” before the USPTO and the courts– Director may limit number of proceedings in first 4 years.

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• Post Grant Review– Board of Appeals to review validity of issued

patents within 9 months of grant– Not available if petitioner filed DJ action alleging

invalidity– Review completed within 1 year (with possible

extension of 6 months)– Provides intervening rights re any new or

amended claims– Threshold showing “more likely than not” that at

least 1 of the claims is unpatentable– Estoppel standard is “raised or reasonably could

have raised” before USPTO or courts.– Director may limit number of proceeding in first 4

years.

Group 2 Rulemakings

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Group 2 Rulemakings

• Transitional post-grant review program for covered business method patents– 8 year post-grant review proceeding for certain

business method patents– Petitioner for review must have been sued for, or

charged with, infringement of the subject patent– Provides that an ATM is not a “regular and

established place of business” for purpose of venue

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Group 3 Rulemakings and Other Actions(18-Month Effective Date) (a.k.a. G3 Rulemakings)

• First-Inventor-to-File

• Derivation proceedings

• Repeal of Statutory Invention Registration

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Group 3 Rulemakings

• First-Inventor-To-File– Transitions the U.S. from a first-to-invent system

while maintaining a 1-year grace period for disclosures

– Establishes a “derivation” proceeding rather than interference

– Clarified statute of limitations for disciplinary actions against practitioners

– Requires USPTO Director, in consultation with USTR, State Dept. and DOJ to prepare and submit to Judiciary Committee a report on the operation of prior user rights in selected countries

– Includes Sense of Congress provisions regarding benefits of FITF

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Group 3 Rulemakings

• Derivation Proceedings– Applies only to applications subject to first-to-file

provisions– Petition requirements

• Must show basis for finding derivation• Must be filed within one year of first publication

of a claim to an invention that is the same or substantially the same invention as earlier application’s claim to the invention

• Applicant may file petition

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Studies: USPTO as Lead Agency

Topic Objective Due Date from Enactment

International Protection for Small Businesses

Report on how to help small businesses with international patent protection, including a revolving fund loan or grant program to defray costs

4 months

Prior User Rights Report on the operation of prior user rights in other industrialized countries

4 months

Genetic Testing Report on providing second opinion genetic diagnostic testing

9 months

Misconduct Before the Office

Report on impact of new statute of limitations provisions barring disciplinary action in response to substantial evidence of misconduct before the Office

Every 2 years

Satellite Offices Report on the rationale for selecting the location of satellite offices, progress in establishment, and achieving identified purposes

3 years

Virtual Marking Report on the effectiveness of the virtual marking as an alternative to physical marking articles

3 years

Implementation of AIA

Report on how AIA is being implemented by the USPTO and its effect on innovation, competitiveness, and small business access to capital

4 years

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Studies: USPTO as Consultant

Topic Section of AIA

Lead Agency

Objective Due Date from

Enactment

Effects of First-Inventor-to-File on Small Business

§ 3 Small Business Administration

Report on effects of small businesses switching to a first-inventor-to-file system

1 year

Patent Litigation

§ 29 General AccountabilityOffice

Report on impact of patent infringement litigation by non-practicing entities

1 year

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Programs: USPTO to Establish

Topic Objective Due Date from Enactment

Pro Bono Directs USPTO to work with IP law associations to establish pro bono programs to assist financially under-sourced independent inventors and small businesses

Immediately

Diversity of Applicants

Requires USPTO to establish methods for studying diversity of patent applicants

6 months

Patent Ombudsman for Small Businesses

Requires USPTO to establish and maintain a Patent Ombudsman Program to provide support and services to small business concerns and independent inventors

12 months

Satellite Offices Requires USPTO to establish 3 or more satellite offices in the U.S.

3 years

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Timeline: Major Milestones

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Opportunities for Public Input

• Pre-enactment stakeholder meetings– Two sessions held in August 2011

• Notice-and-comment rulemaking– Formal comments

• Public roundtables• Email: aia_implementation@uspto.gov

– Informal comments

• AIA Microsite– https://www.uspto.gov/americainventsact

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AIA MicroSitehttp://www.uspto.gov/americainventsact

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• One-stop shopping for public regarding AIA implementation

• Regularly updated

• Preparing for phase II to release upon AIA enactment

Thank You