The America Invents Act implementation

Figures & data

Figure 1. A timeline showing implementation of the AIA, indicating the year in which the provision became effective. Many provisions became effective in the fall of 2011 or on September 16, 2012 (one year after enactment), but the final provisions were not effective until eighteen months after enactment, i.e., March 16, 2013. Some provisions generally apply only to applications with an effective filing date after March 15, 2013.

Table 1. Relevant substantive provisions of the AIA.

§3 – ‘First inventor to file'	Converts the U.S. patent system from first-to-invent to modified first-to-file
§4 – ‘Inventor's Oath'	Lowers burden where an inventor is unable or refuses to sign, and allows by assignee
§5 – Prior user rights	Prior user defense is broadened for good faith commercial use at least 1 year before filing, with a University Exception
§6 – Post grant review & Inter partes review	Post grant review (PGR) is available within the first 9 months after the patent issues; inter partes review afterwards. Both reviews are to be completed within 1 year PGR can be based on any grounds or on a ‘novel or unsettled legal question.' Inter partes review is only on prior art patents and publications. The patent owner has an opportunity to amend the claims, provide evidence and comments and challenger can file written comments. The challenger must prove unpatentability by a preponderance of the evidence and is precluded in future proceedings from arguing any ground that could have been raised here
§8 – 3rd Party submissions	3rd parties may submit art to the USPTO and it will be considered if submitted before the earlier of (1) the date of a notice of allowance or (2) six months from publication or first rejection
§12 – Supplemental exam	A mechanism to cure prosecution defects to avoid charges of inequitable conduct
§15 – Best mode	Failure to disclose best mode is no longer basis for invalidity, although still required during prosecution
§16 – Marking	Marking of products with patent numbers may be virtual
§17 – Advice of counsel	Failure to obtain advice of counsel cannot be used to prove willfulness of infringement
§33 – Human organisms	Prohibition of patent claims directed to, or encompassing, human organisms

Remaining provisions deal largely with fee setting, venue and jurisdiction and studies.