Provision

Section of AIA

Section of
35 USC

Summary

Inter Partes Reexamination Transition for Threshold

6(c)(3)

312, 313 amended

A request for inter partes reexamination requires a reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request. Inter partes reexamination will no longer be granted upon a showing of a "substantial new question of patentability" (SNQ).

Fee Setting Authority

10

123 added

USPTO may set or adjust any established patent and trademark fees to recover the aggregate estimated costs for processing, activities, services, and materials relating to patents and trademarks. Most fees will be reduced by 50% for small-entity applicants and 75% for micro-entity applicants as defined in the newly added 35 USC 123.

Best Mode

15

282(3), 119(e)(1), 120 amended

Failing to disclose the best mode is no longer an available infringement defense and, if an applicant claims domestic benefit in a US application, will not cause the domestic benefit claim to be denied.

Virtual and False Marking

16

287(a) amended

A new patent marking alternative is available by fixing on the patented article the word "patent" or "pat." with a URL accessible to the public without charge.

292 amended

Only the US may sue for the penalty of false patent marking. A person may file a civil action, however, for recovery of damages if he or she has suffered a competitive injury because of such a false marking. The marking of a product with matter relating to a patent that covered the product but has expired is not a violation of this section.

Jurisdiction and Procedural Matters

19

299 added

A joinder or consolidation for trial is allowed only if the parties are accused of infringement not just of the same patent, but on the basis of the same series of transactions or occurrences relating to the use (or making, importing into the US, offering for sale, or selling) of the same patented product or process. This provision is expected to raise the litigation cost for NPEs.

Provision

Section of AIA

Section of
35 USC

Summary

Prioritized Examination

11(h)

A patent applicant may choose to pay US$ 4,800 (or US$ 2,400 if the applicant is a qualified small-entity applicant) and other prescribed fees to have his or her application advanced out of turn for examination.

15% Transition Surcharge

11(i)

Patent fees set forth in 35 USC 41(a), (b), (d)(1), and 132(b) will be temporarily charged with a 15% surcharge during the transitional period. Please see the Attachment.

Provision

Section of AIA

Section of
35 USC

Summary

USPTO Reserve Fund

22

42(c) amended

It is to be established in the US Treasury a Patent and Trademark Fee Reserve Fund. USPTO fees collected in excess of the amount appropriated by the US Congress will be deposited in the Reserve Fund.

Provision

Section of AIA

Section of
35 USC

Summary

Electronic Filing Incentive

10(h)

An additional fee of US$ 400 (or US$ 200 for small-entity applicants) will be charged for original nonprovisional utility patent applications that are not filed by electronic means as prescribed by the USPTO.

Provision

Section of AIA

Section of 35 USC

Summary

Inventor's Oath or Declaration

4

115, 118, 251 amended

When an inventor is deceased or under legal incapacity, cannot be found or reached after diligent effort, or is under an obligation to assign the invention but has refused to make the required oath or declaration, a substitute statement will be accepted. If the inventor is obligated to assign a patent application, he or she may include the required statements in the assignment. A person to whom the inventor has assigned or is under an obligation to assign the invention may file the application.

Citation of Prior Art in a Patent

6(g)

301 amended

A person may cite to the USPTO more prior art references than before, including statements of the patent owner filed in a proceeding before a Federal court or the USPTO where the patent owner takes a position on the scope of any claim of a particular patent.

Post-Grant Review

6(d)~(f)

Ch. 32 added

A newly established post-grant proceeding, similar to the opposition proceeding before the EPO. Within 9 months from the issue date of a US patent, any person other than the patent owner may petition to institute a (first-window) post-grant review of the patent.

Inter Partes Review

6(a)~(c)

Ch. 31 amended

The inter partes reexamination will be modified and renamed as the inter partes review, a second-window review proceeding for any granted US patent. If no (first-window) post-grant review is initiated, a person other than the patent owner may petition to institute an inter partes review of a patent after 9 months from its issue date, but only on the ground of 35 USC 102 or 103 issues.

Third Party Preissuance Submission of Prior Art in a Patent Application

8

122(e) added

Generally, if a US patent application is not yet taken for examination, any third party may submit to the USPTO any patent literature reference or other printed publication which is believed to be relevant to the examination of the application, within 6 months from the publication date of the patent application.

Supplemental Examination

12

257 added

To avoid inequitable conduct charges, a patent owner may request supplemental examination of a patent for the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. After that, the patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent.

Advice of Counsel

17

298 added

Even if an accused infringer fails to obtain the advice of counsel or to present it to the court or jury, such failure is not to prove that the accused infringer willfully infringed the patent or intended to induce infringement of the patent.

Provision

Section of AIA

Section of
35 USC

Summary

First Inventor to File System

3

100, 102, 103, 291, 135 amended

104 repealed

Drawing on the characteristics of two existing systems by combining first-to-file system with a grace period, it creates a unique first-inventor-to-file system in the US. The effective filing date is redefined as the filing date (or the earliest priority date if any foreign priority or domestic benefit is claimed in a US patent application) and used to evaluate whether the claimed invention is new and non-obvious. If a person can show another application or patent is derived from his or her own invention, that person may challenge the application or patent in a derivation proceeding. This section basically applies to US patent applications effectively filed on or after its effective date.