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:
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
3) The elimination of the failure to disclose
the best mode of carrying out an invention as a defense to patent infringement.
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.
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. ...
days after enactment
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.
Patent Office will impose a $400 surcharge on original applications for patent
(other than design, plant or provisional applications) which are not filed
days after enactment
Patent Office shall report on a study to determine how it can best help small
businesses with international patent protection.
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