Immediate and Delayed Effects of the America Invents Act

Immediate and Delayed Effects of the America Invents Act

Last week, the America Invents Act ("AIA"), which effectuates the most significant and wide-ranging changes to US patent law since the Patent Act of 1952, was passed by the Senate and signed into law. There are many fundamental changes to US patent law created by the Act; however, generally, my advice is: don't throw out your current versions of the patent statute. In this Analysis, Steven J. Lee Ph.D. discusses the Act's immediate and long-term effects. He writes:

     Among the fundamental changes to US patent law created by the Act are:

1) The change from a first-to-invent system to a first-to-file system;

2) The institution of post-grant opposition proceedings within the United States Patent and Trademark Office ("Patent Office"), enhanced prior-user rights, and changes to the false-marking provisions; and

3) The elimination of the failure to disclose the best mode of carrying out an invention as a defense to patent infringement.

     The scope of these changes is vast, and Congress has appropriately built in significant transition provisions to help applicants, patentees, the Patent Office, and the public adjust to them. Although many articles have focused on the new system, none have focused on how we are going to get there. Generally, my advice is: don't throw out your current versions of the patent statute. Pre-AIA law is going to control many proceedings in the Patent Office and the Courts for many years to come.

Immediate Effects

     The default effective date for the provisions of the AIA is one year after enactment. However, most of the provisions have their own designated effective dates. For example, the first-to-file provisions do not become effective for eighteen months, and many provisions take place right away. It should come as no surprise that changes in Patent Office fees (mostly increases, but some reductions) take effect almost immediately. ...

     ....

Longer Term Effects

Ten days after enactment

     The Patent Office shall set fees for priority examination of important technologies (although the regulations controlling such priority examinations have not yet been implemented). A surcharge of 15 percent on many fees takes effect, until the Office sets the new fees pursuant to section 10 of the AIA.

Sixty days after enactment

     The Patent Office will impose a $400 surcharge on original applications for patent (other than design, plant or provisional applications) which are not filed electronically.

120 days after enactment

     The Patent Office shall report on a study to determine how it can best help small businesses with international patent protection.

(footnotes omitted)

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