AIA Technical Amendment Becomes Law

H.R. 6621, officially titled An Act To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code was signed into law by President Obama on January 14, 2013 and, for the most part, the provisions of the law are now effective.

Here is the official summary:

  • Amends the Leahy-Smith America Invents Act (AIA) to make technical changes regarding the transitional program for covered business method patents and joinder of parties.
  • Applies, to any civil action commenced on or after enactment of this Act, the AIA's bar on using an accused infringer's failure to obtain the advice of counsel to prove that any infringement was willful or induced. (Currently, the bar would not take effect until one year after the AIA's enactment.)
  • Prohibits a nine-month waiting period for inter partes review from applying to issuances of first-to-invent patents ineligible for post-grant review. (Currently, the remaining first-to-invent patents to be issued prior to the effective date of the new first-to-file patent system have no avenue for review during the first nine months because they must wait nine months for inter parties review and are ineligible for post-grant review.)
  • Revises the filing deadline for inter partes review to be after the later of either: (1) nine months after the grant of a patent (currently, nine months after such grant or the issuance of a reissue patent), or (2) the termination date of any post-grant review.
  • Extends the time period for an applicant to file an inventor's oath or declaration, substitute statement, or recorded assignment until the date on which the issue fee for the patent is paid. (Current law permits a notice of allowance of a patent application only after such a filing.)
  • Makes provisions concerning travel expenses for employees of the U.S. Patent and Trademark Office (USPTO) and the payment of administrative judges effective as of September 16, 2011.
  • Modifies requirements and time periods for activities relating to patent term adjustments. Revises the patent extension period for certain international applications. Specifies that a civil action filed in the U.S. District Court for the Eastern District of Virginia is the exclusive remedy for challenging a USPTO decision on a request for reconsideration of a patent term adjustment determination.
  • Repeals a provision prohibiting the USPTO from accepting certain international applications designating the United States from anyone not qualified under specified application requirements.
  • Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO's administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)
  • Modifies requirements for applicants filing petitions to institute derivation proceedings and delineates the criteria applied to deem an application as an earlier application with respect to an invention relative to another application.
  • Sets forth authority for the Patent Trial and Appeal Board to conduct, and for courts to review appeals from, interference proceedings declared after enactment but before the effective date of certain AIA amendments replacing interference proceedings with derivation proceedings.
  • Modifies the original appointment terms for members of the Patent Public Advisory Committee and the Trademark Public Advisory Committee. Directs the Secretary of Commerce to designate, from among the appointed members, a Chair and Vice Chair of each committee.

Read the text:

  • http://www.gpo.gov/fdsys/pkg/BILLS-112hr6621enr/pdf/BILLS-112hr6621enr.pdf

4 thoughts on “AIA Technical Amendment Becomes Law

  1. Dennis, are you going to offer an electronic update [from this technical corrections enactment] to your great prior electronic AIA-markup version of the patent statute?

  2. The better “technical amendment” would have been to say “oops, we made a mistake in enacting the AIA (Abominable Inane Act,” and just simply repeal it. But all those litigators would then lose out on the “fun” of chargin clients for what all those weird phrases (such as “otherwise publicly disclosed”) mean in the AIA. And the “witching hour” (i.e., March 16) will be here sooner than you think.

  3. I think the reported summary of the impact of H.R. 6621 to the advice of counsel defense, 35 USC § 298, is slightly misstated.

    The effect of the amendment makes the advice of counsel defense 298 applicable to any action commenced on or after January 14, 2013 without regard to the issue date of the patent. THat is the main change of the amendment.

    As a result of the “effective date” provision of section 35 of the AIA, § 298 was only applicable to any patent that issued on or after September, 16, 2012 (in addition to being limited to lawsuits commenced one year after the AIA’s original enactment). See AIA § 35 Effective Date (“Except as otherwise provided in this Act, the provisions of this Act shall take effect upon the expiration of the 1-year period beginning on the date of enactment of this Act [September 16, 2011] AND shall apply to any patent ISSUED on or after that effective date.”).

    The amendment from H.R. 6621 effectively removes the patent issue date restriction, but only for lawsuits filed on or after January 14, 2013. H.R. 6621, § 1(a) (“ADVICE OF COUNSEL.—Notwithstanding section 35 of the Leahy-Smith America Invents Act …, section 298 of title 35, United States Code, shall apply to any civil action commenced on or after the date of the enactment of this Act.” § 1(n) (“EFFECTIVE DATE – Except as otherwise provided in this Act, the amendments made by this Act shall take effect on the date of enactment of this Act [January 14, 2013], and shall apply to proceedings commenced on or after such date of enactment.”).

    Thus, I read 298 as now applying to any action commenced on or after January 14, 2013 without regard to the issue date of the patent.

    If others view this differnetly, I would appreciate hearing from them so I get it right when I add it to the APD.

  4. Revises USPTO funding requirements to make all federal patent law fees available for expenses relating to patent processing and to permit patent and trademark fees to be used interchangeably to cover proportionate shares of the USPTO’s administrative costs. (Currently, patent fees are used to cover administrative costs relating to patents while trademark fees are used to cover administrative costs relating to trademarks.)

    How Enronesque.

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