America Invents Act

On September 16, 2011, President Obama signed into law the America Invents Act (AIA). The AIA represents the most significant reform to the U.S. patent system in nearly 60 years.

Most significantly, the AIA changes the U.S. patent system to a first-inventor-to-file system to bring it more in line with the rest of the world. The AIA generally provides that the inventor who files a patent application for an invention first will be entitled to the patent, regardless of whether someone else invented it first. While this is the general rule, the AIA does provide that a disclosure by an inventor of an invention can prevent another from being entitled to a patent and grant the inventor a 12 month grace period to file his/her application.

The AIA also provides different mechanisms for third parties to challenge the validity of a granted patent. The post-grant review process is limited to petitions filed within the first nine months after the grant of the patent. After the nine-month period, a third party may petition for an inter-partes review of a patent if it can satisfy the requirements to do so. There is also an additional mechanism for reviewing the validity of certain business method patents. The patent office will be in charge of further defining these processes through the rule-making process but the intent of the AIA is to provide these mechanisms so that a party can challenge the validity of a patent without incurring the costs of litigation.

The AIA has further provisions that relate to: unpatentability of tax strategies and human organisms, third party submissions during prosecution of an application, false patent marking litigation, patent infringement defenses, fee reductions for certain filers, and supplemental examination for a patent to correct errors that occurred during prosecution. For an overview of the AIA, please click here.

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