SECTION 3-3: AIA GENERAL OVERVIEW

America Invents Act (AIA)

The America Invents Act (AIA) was signed into law on September 16, 2011, and made significant changes to the US patent system. The AIA was designed to promote innovation and economic growth by making it easier to obtain and enforce patents.

Inventor’s Oath or Declaration

The AIA made several changes to the inventor’s oath or declaration, which is required for all patent applications. The AIA now requires inventors to state that they believe themselves to be the original inventors of the subject matter of the patent application, and that they have no knowledge of any prior art that would make the invention unpatentable. The AIA also requires inventors to disclose any information that would be relevant to a determination of whether the invention is patentable.

Supplemental Examination

The AIA created a new procedure called supplemental examination, which allows a patent owner to request that the USPTO reconsider or correct information that is believed to be relevant to the patent. Supplemental examination can be used to address issues such as prior art that was not considered during the initial examination of the patent application, or new information that has come to light since the patent was issued.

Preissuance Submission

The AIA allows third parties to submit information to the USPTO prior to the issuance of a patent. This information can include prior art or other information that is relevant to the patentability of the invention. The USPTO is required to consider all preissuance submissions, but the USPTO is not required to grant a patent even if the preissuance submission raises a question of patentability.

Ethics

The AIA made several changes to the ethics rules that apply to patent practitioners. These changes include new rules on conflicts of interest, communication with clients, and advertising. The AIA also created a new disciplinary process for patent practitioners who violate the ethics rules.

Citation of Patent Owner Claim Scope Statement

The AIA allows third parties to cite patent owner claim scope statements in patent litigation proceedings. Patent owner claim scope statements are written statements by a patent owner that define the scope of the patent owner’s claims. Third parties can cite patent owner claim scope statements to support their arguments that a patent is invalid or unenforceable.

Administrative Patent Trial Final Rules

The AIA created three new administrative patent trials: post-grant review (PGR), inter partes review (IPR), and covered business method patent review (CBM review). These trials allow third parties to challenge the validity of patents after they have been issued. The USPTO issued final rules for these trials in 2012.

Post Grant Review

PGR is a trial that can be used to challenge the validity of any patent, regardless of its age or technology. PGR trials are conducted by the Patent Trial and Appeal Board (PTAB), which is a panel of three judges. To initiate a PGR trial, a third party must file a petition with the PTAB. The petition must identify the patent claims that the third party is challenging, and the prior art on which the third party is relying. The PTAB will grant the petition if it finds that the petition raises a reasonable likelihood that the challenged claims are invalid.

Inter Partes Review

IPR is a trial that can be used to challenge the validity of patents that are less than nine years old. IPR trials are conducted by the PTAB. To initiate an IPR trial, a third party must file a petition with the PTAB. The petition must identify the patent claims that the third party is challenging, and the prior art on which the third party is relying. The PTAB will grant the petition if it finds that the petition raises a reasonable likelihood that the challenged claims are invalid.

Covered Business Method Patent Review

CBM review is a trial that can be used to challenge the validity of business method patents that were issued before September 16, 2012. CBM review trials are conducted by the PTAB. To initiate a CBM review trial, a third party must file a petition with the PTAB. The petition must identify the patent claims that the third party is challenging, and the prior art on which the third party is relying. The PTAB will grant the petition if it finds that the petition raises a reasonable likelihood that the challenged claims are invalid.

Transitional Program for Covered Business Methods

The AIA created a transitional program for covered business method patents. This program allows third parties to challenge the validity of covered business method patents using a simplified procedure. The transitional program is available for covered business method patents that were issued before September 16, 2012, and for covered business method patents that were pending on that date.

First-Inventor-to-File Proposed Rules and Examination Guidelines

The AIA transitioned the United States from a first-to-invent patent system to a first-inventor-to-file patent system.