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Lame Duck Patent Reform: AIA Technical Corrections

For a better part of the past year, there has been talk about the possibility of Congress moving a technical corrections bill to fix some “errors” within the America Invents Act (AIA).  The AIA was signed into law on September 16, 2011 and contains, as most major pieces of legislation do, some minor drafting errors.  On Friday, November, 30, 2012, a bill making technical changes to the AIA was introduced in the House of Representatives.  The bill number is HR 6621.  The proposed AIA package does NOT include a so-called “fix” to post-grant review that some considered to be substantive and not technical.

To rewind: Earlier this year, there had been some behind the scenes discussions on Capitol Hill about possibly modifying the AIA’s PGR estoppel provisions in a way that would have been problematic to patent owners.  The discussed change would have removed from the AIA the “could have raised” estoppel standard.  Concerns about weakening the PGR estoppels provisions as part of a ‘technical” package were communicated by members of the Innovation Alliance, university, inventor, and venture capital communities.

Fast forward to today:  The bill does not contain the troubling PGR “fix.” Key staff on the Hill believe the measure to be non-controversial. House passage of the measure could take place before year’s end.  What follows is the text of a draft section-by-section analysis of what was expected to be in the introduced AIA package of fixes.

As readers of IPWatchdog.com may know, the IP policy group at ACG has followed patent reform closely over the years.  So, should you have any questions or concerns, feel free to contact us at: 202-327-8100 or via email at: cooney@acg-consultants.com.


Advice of Counsel

The AIA’s section 17 creates a new § 298 of title 35 that bars the use of evidence of an accused infringer’s failure to obtain advice of counsel, or his failure to waive privilege and introduce such opinion, to prove either willfulness or intent to induce infringement.  Section 17, however, neglected to specify when this new authority became effective.  As a result, new § 298 is subject to the default effective date at section 35 of the AIA, and applies only to patents issued one year or later after enactment of the AIA.  This subsection makes § 298 applicable to all civil actions commenced after the enactment of this corrections act.


Transitional Program for CBMs.

This subsection corrects two scrivener’s errors in section 18 of the AIA. These changes have no substantive effect.


Joinder of Parties.

This subsection corrects a scrivener’s error in the new § 299 of title 35.  This change has no substantive effect.


Post-grant Review – the Dead Zones

This paragraph fixes two provisions that inadvertently make it impossible to seek either post-grant or inter partes review of a patent during certain time periods.  Section 311(c) of title 35 bars anyone from seeking inter partes review of a patent during the first nine months after the patent issues – or until a post-grant review of a patent is completed if such review is instituted.  Section 311(c) was intended to preclude challengers from using IPR during the period when they can instead use PGR.

The problem with the provision is that, during Senate floor consideration of the AIA in March 2011, another provision was added to the bill via the managers’ amendment that allows only first-to-file patents to be challenged in PGR.  This provision, at section 6(f)(2)(A) of the AIA, was intended to allow USPTO a longer period to prepare to conduct PGR proceedings, and to exclude patents that raise discovery-intensive invention-date and loss-of-right-to-patent issues from PGR.

However, § 311(c) takes effect and applies to all petitions for IPR that are filed on or after September 16, 2012.  Yet for several years thereafter, almost all patents that are issued will still be first-to-invent patents.  And under § 311(c) of title 35, these patents cannot be challenged in IPR during the first 9 months after their issuance, while under section 6(f)(2) of the AIA, these patents cannot be challenged in PGR.  Subparagraph (A) of this paragraph eliminates this nine month “dead zone” by making § 311(c) in applicable to patents that are first-to-invent patents and are thus ineligible for PGR.

Subparagraph (B) addresses another dead zone that is unique to reissue patents.  Under § 311(c)(1) of title 35, IPR cannot be sought during the nine months after a patent is reissued.  This limit was imposed in order to force challengers to bring a PGR challenge (rather than IPR) against what is, in effect, a new patent.  However, § 325(f) of title 35 then bars a challenge to any claim in a reissue patent that is “identical” to or “narrower” than the claims in the original patent.  As a result, such “identical” or “narrower” claims could not be reviewed in either a PGR or an IPR during the nine months after a reissue.

Section 325(f)’s limits also would be difficult for USPTO to administer at the petition stage; it is often far from clear whether a new or modified claim is narrower or substantially the same as the claims in the original patent.  Subparagraph (B) eliminates the difficulties with § 325(f), and its resultant dead zone, by repealing subsection (f) and treating the reissue patent as a new patent that is immune from IPR but subject to PGR during the first nine months after its reissue.


Correct Inventor

This subsection amends the authorization of settlement in derivation proceedings to refer to “correct inventor” in the singular, out of recognition that it is the entire inventive entity that must be named in the settlement agreement.  This change has no substantive effect.


Required Oath

Paragraph (1) liberalizes the time allowed for an inventor or assignee to file the required oath or alternative statement, allowing him to file as late as payment of the issue fee (rather than requiring filing prior to allowance).  Paragraph (2) corrects § 115(g)(1) by using “that claims” rather than “who claims,” since the antecedent for these words is “application” rather than “inventor.”  Paragraph (2)’s change has no substantive effect.  (USPTO requests.)


Travel Expenses and Payment of Administrative Judges

 Section 21 of the AIA, which makes minor changes to the law regarding the compensation of USPTO employees for travel and the payment of APJs, was not give its own effective date.  This subsection makes these provisions effective upon enactment of the AIA.


Patent Term Adjustments

This subsection liberalizes and clarifies the time limits for taking certain actions in relation to patent-term adjustments.  These changes are minor, and only apply prospectively.


Improper Applicant

 This subsection repeals an unnecessary limitation on who may file an international application designating the United States.


Financial Management Clarifications

This subsection makes several technical changes to § 42 of title 35, concerning USPTO funding.  These changes: (1) ensure that the rule requiring that patent fees be spent for patent purposes also applies to RCE fees; and (2) ensure that all USPTO administrative costs will be covered by either patent fees or trademark fees.


Derivation Proceedings

Currently, the third sentence of § 135(a) will allow a derivation proceeding to be sought only within the year after the victim’s claim that has been the target of derivation has published.  It is possible, however, that a deriver could file first, but delay claiming the derived material until more than a year has elapsed after the victim’s claims have published (that is, until after the current deadline has lapsed).

The changes made by this subsection preclude such a scenario by requiring the proceeding to be sought during the year after the publication of the deriver’s claim to the invention.  These changes also add a definition of “earlier application” to § 135(a), correct inconsistencies in the AIA’s version of § 135(a), and authorize the PTAB to conduct, and the courts to hear appeals of, interferences commenced after the effective date of the AIA’s amendments to § 135(a).


Terms of Public Advisory Committee Members 

This subsection makes the terms of PPAC and TPAC members run for 3 years from a fixed date rather than from the date that they are appointed, and requires the Chairman and Vice Chairman to be appointed from among existing members and makes their terms run for one year.  Current law designates only a Chairman and gives him a 3-year term.

The belief is that these changes will produce better coordination of members’ terms, will allow experienced for the appointment of an experienced Chair without requiring such individuals to serve two 3-year terms, and will provide for automatic replacement of a Chairman who does not complete his term of service.


Effective Date of Uruguay Round Agreements Act

The URAA amendments took effect in 1995 but were made inapplicable to applications filed before that effective date.  Unfortunately, a small number of applicants have engaged in clearly dilatory behavior and continue to maintain pending applications with effective-filing dates that precede the URAA effective date.  This subsection requires these applicants to complete prosecution of these applications promptly after the enactment of this corrections act.


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Join the Discussion

3 comments so far.

  • [Avatar for Stan E. Delo]
    Stan E. Delo
    December 2, 2012 03:18 pm


    Thanks for your very detailed report about the proposed technical amendments. This sort of well-connected and impartial insight would be hard to find anywhere else.

    Best wishes,

  • [Avatar for Steve M]
    Steve M
    December 3, 2012 02:50 pm

    Thank you, Mr. Cooney.

    Any thoughts (anyone) on whether or not — assuming this passes — patents issued between 9/16/12 and the (effective) date of 6621’s implementation / the president’s signature would be subject to IPR during the first 9 months post-issuance?

    Isn’t any such retroactivity illegal under the constitution?

  • [Avatar for Steve]
    December 4, 2012 12:22 pm

    Thank you for the informative analysis, Mr. Cooney.

    One area of your explanation I’m having trouble understanding, though, is the discussion of subparagraphs (A) and (B) with regard to the dead zones. I can’t tell if you’re referring to an (A) and (B) in the proposed HR 6621 (in which case, those subparagraphs don’t seem to appear in the bill) or in the enacted AIA.

    It sounds like you’re referring to an (A) and (B) that makes changes and repeals provisions of the AIA, but I don’t see an (A) or (B) under subsection (d) of the HR 6621. I only see those subparagraphs in the actual AIA in section 6 (f) (2) (A) and (B).

    Could it be that you’re looking at an earlier draft of HR 6621 that is organized differently? It seems like the provisions of HR 6621 you mean to be referring to are subsection (d) (1) and (2) instead of (A) and (B).