Washington – The most significant reform to the U.S. patent system in more than a century took a major step forward at 12:01 am Sunday, as numerous provisions of the Leahy-Smith America Invents Act of 2011 went into effect. The new rules will spur innovation and economic growth by streamlining the patent application process and introducing new procedures to ensure patent quality. Seven reforms to U.S. patent law went into effect one year after the signing of the bipartisan patent reform legislation by President Barack Obama on September 16, 2011.
Some of the new rules are as follows:
- Three new administrative trial provisions — inter partes review, post-grant review, and the transitional program for covered business method patents—will offer third parties timely, cost-effective alternatives to district court litigation to challenge the patentability of an issued patent. Additional information on third party submissions can be found here.
- The supplemental examination provision allows applicants to submit additional information relevant to the patentability of an issued patent to the Office in a new procedure that may protect the patent from an inequitable conduct charge.
- The inventors oath and declaration provision that for the first time allows assignee filing of a patent application.
- The citation of prior art and written statements provision will enable the Office to treat the claims in a patent consistent with how a patent owner represents its claims to the courts or in other Office proceedings.
“These new AIA provisions now in effect give us tools to deliver cutting-edge technologies to the marketplace sooner, further reducing the backlog of patent applications, and getting high-quality patents issued faster,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. “And that will translate into opportunity, growth, and jobs for large and small innovators across America.”
At 12:01 a.m. on Sunday, September 16, members of the Patent Trial and Appeal Board (PTAB) stayed open for 24 straight hours, accepting petitions requesting a variety of legal reviews. With the new rules in effect, the PTAB came into being, having been reconstituted by the AIA from the previous review board, the Board of Patent Appeals and Interferences.
The USPTO has also created new means of contact for the public to access assistance or information about the new AIA provisions: via 1-855-HELP-AIA or HELPAIA@uspto.gov.
A number of AIA provisions have already begun the implementation process, adjustments that enabled the USPTO to immediately hire new examiners, institute new patent acceleration tools, and aggressively modernize its IT infrastructure The AIA also instructed the USPTO to open new satellite offices, and the USPTO is moving forward on opening offices in Dallas-Fort Worth, Denver, and Silicon Valley. The USPTO opened a Detroit satellite office in July.
Other provisions of the AIA will go into effect on March 16, 2013, including the shift to a first-inventor-to-file system harmonizing the U.S. system with most industrialized nations. A Notice of Proposed Rulemaking has been published proposing the new rules and the final rule for the new Derivation Proceeding to ensure that the first inventor to file obtains the patent has already been published.