Implementation of the America Invents Act

New Fees – 15% increase: The USPTO has announced new fees that will become effective on September 26, 2011. These fees represent an across-the-board 15% increase for almost all PTO fees. The effective date of the fees will be applied based upon the associated underlying filing date. Thus, a new application properly filed by Express Mail on September 25, 2011 will be charged under the old regime even if it does not arrive at the USPTO until September 26. Likewise, for most other responses, the date of the certificate of mailing will be used to calculate the fees due. [Link]

New Fees – Micro Entity: A new micro entity status has been created by the AIA that provides for a 75% discount on fees for certain applicants (including universities with operating budgets of more than $1 billion). However, the USPTO has announced that the micro entity status will only become effective after it implements final regulations on the topic.

Inter Partes Reexamination: Already effective is a new standard for initiating an inter partes reexamination. The new standard requires a showing that there is a reasonable likelihood that the requester will prevail with respect to at least one of the patent claims challenged in the request. This is a stricter standard that the old requirement of a substantial new question of patentability. The standard for ex parte reexamination remains unchanged. In one year (on September 16, 2012), the USPTO will stop accepting inter partes reexamination requests and instead move to the new inter partes review procedure. The new review proceeding will be conducted before the new Patent Trial and Appeal Board rather than before an examiner. At the one-year anniversary, new post-grant review proceedings, transitional business method review proceedings, and supplemental examination proceedings will also be implemented.

Tax Strategies: As part of the AIA, all tax strategies have been deemed to be within the prior art and therefore a tax strategy cannot be used to distinguish the claimed invention from the prior art. There are some limits so that developers of certain software can still obtain patents. This provision applies to any application now pending or yet to be filed. In his memo to examiners, Robert Bahr indicated that examiners should treat tax strategy limitations in the same way that printed matter limitations are treated under MPEP 2112.01 (III).

Human Organisms: The USPTO has taken the position that the ban on the patenting of human organisms does not change its longstanding policy in any way. Thus, under the rule a claim is not patentable if, when interpreted as a whole, it "encompasses a human being."

21 thoughts on “Implementation of the America Invents Act

  1. 21

    At least the fee hike should help the USPTO realize its plan to open a long-promised patent office in Detroit. I wonder, though, how long it will take before Congress once again starts siphoning fees (now increased) from the USPTO.

  2. 20

    A great deal of attention has been directed to provisions of the recent Leahy-Smith America Invents Act and the provisions of the act directed to first inventor to file, post grant review, and other such changes to U.S. Patent Law. This attention is much warranted as these represent some of the most significant changes to U.S. Patent Law in recent history.

  3. 19

    I think in the case they would be.

    Do you have an authority you can cite for this new rule?

  4. 14

    No comments?

    What if a certain country systematically hacked US companies for IP and filed on them.

    What is to prevent the technology company from filing on inventions they learn about from suppliers?

    And the list goes on.

    And don’t give me derivation proceedings. Those are not available to a defendant in court.

  5. 13

    Human organisms?

    Why focus on the ant and ignore the elephant. The most dramatic change, more even than FTF, is the repeal of 102(f).

    This removes inventorship from the conditions for obtaining a valid patent. THIS will have major long term impacts on the US, not just on the US patent system.

    Think about it.

  6. 12

    “Notwithstanding any other provision of law, no patent may issue on a claim

    directed to


    encompassing a human organism.”

    “This provision of the Leahy-Smith America Invents Act does not change existing law or longstanding USPTO policy that a claim encompassing a human being is not patentable.”

    O Reeally? The law that is the most extensive revamp of law does not change existing law…? Especially as the law itself point blank says otherwise? I don’t think Bahr is in a position to make that comment.

    Plus, the law as passed has a disjunctive conjunction. The “encompassing human organism” portion may be addressed by the comments, but the more important “directed to” portion is not.

    So the ban portion of patenting humans is only half the ban of the new law.

  7. 11

    “Micro Entity”

    per the bill Micro Entity is defined as one who “has not been named as an inventor on more than 4 previously filed patent applications”

    It’s a joke and the bill will prove to be a nightmare for inventors and a boon for infringers.

  8. 8

    Where does the USPTO say this?
    The USPTO has taken the position that the ban on the patenting of human organisms does not change its longstanding policy in any way. Thus, the rule a claim is not patentable if, when interpreted as a whole, it “encompasses a human being.”

  9. 7

    An immediate 15% increase across the board but Micro-entity fee status to be determined? How does this help private inventors now? Ya-sure- just like Obamacare helped with my health care when my insurance company left the market because of mandates and now I pay 36% more for far less coverage.

    If the foolish senators behind this bill and uninformed senators and representatives voting for it get together with Obama to “HELP” us any more we will be out of business.

    I went to an Electronics industry trade show this week and many there (small firms based on the patents they held or hope for them) were feeling almost hopeless over the AIA.

    Please Mr. President- stop helping us!

  10. 6

    It would be hard to file an item by Express Mail on Sunday, Sept. 26, although one would expect many other papers filed with a normal certificate of mailing via First Class Mail which may not be postmarked until Sept. 26…

  11. 5

    Certianly is an inventorship problem, too. But I still couldn’t invalidate the patent using the derivation as prior art like I could under former 102(f). I also couldn’t use the third party’s secret work as prior art for obviousness under 103, which the OddzOn v. Just Toys case, 122 F.3d 1396 (FC 1997), holds I could.

  12. 4

    If I understood correctly, that should be a violation of the new 35 USC 100, and a false inventorship oath, for filing an application on which one is not a true [independent] inventior. This is a first inventor to file system [that is even the Title of AIA Sec. 3], not just a bare first to file system. [starting 18 months from now]

  13. 3

    Here is something confusing me about the new act. Section 102(f) on derivation is going away. If I’m an accused infringer and I have evidence the patentee derived the cliamed invention from a third party, but the third party’s work was never publically available, how do I invalidate the claimed invention under section 102/103? Derivation proceedings are only available to the third party. Granted there is inequitable conduct here but this seems like a big hole unless I’m overlooking something.

  14. 2

    According to the Most Innovative Companies annual survey more than half of the most innovative companies in the world came from Asia and Europe.

  15. 1

    AIA § 123(d)(2) provides that “The Director may, in the Director’s discretion, impose income limits, annual filing limits, or other limits on who may qualify as a micro entity pursuant to this subsection if the Director determines that such additional limits are reasonably necessary to avoid an undue impact on other patent applicants or owners or are otherwise reasonably necessary and appropriate.”

    I would not be shocked by some kind of cap on universities’ ability to take advantage of micro entity status, especially given that individual inventors have a statutory income limit on micro entity status (a gross income of three times the median household income).

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