Seven provisions of the AIA and USPTO implementing final rules for these provisions went into effect on September 16, 2012:
- Inventor’s oath or declaration;
- Preissuance submissions;
- Supplemental examination;
- Citation of patent owner claim scope statements;
- Post grant review;
- Inter partes review; and
- Covered business method review
Effective September 16, 2012 under the AIA, third-parties can now submit prior art documents for a pending patent application at the USPTO. 35 U.S.C. 122(e) specifies the following for third-party prior art submissions:
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.–
(1) IN GENERAL.–Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of–
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) THE LATER OF.–
(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.–Any submission under paragraph (1) shall–
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
Effective September 16, 2012 under the AIA, the following important changes take effect for corporate entities applying for patent protection:
- Allowed to be “Patent Applicant”. Corporate entities can now file patent applications in their own name instead of the name of the inventors as previously required. Basically, any corporate entity that can show a proprietary interest in the patent rights will be able to apply for patent protection as the “patent applicant”.
- Must be Filed by Registered Patent Attorney. Included within the new changes are requirements that corporate entities cannot file patent applications pro se(including provisional patent applications) and now must file patent applications via a U.S. Registered Patent Attorney.
A good discussion regarding the new rule changes is located at Patenty-O.
The Senate has a substitute bill titled the Patent Reform Act of 2010. Below is a summary of this bill:
A. Patent Application Related.
- First to File System. The one-year grace period would be eliminated unless the inventor was the first discloser.
- Micro-Entity. A new entity called a “micro entity” is created for entities with less than 5 patent applications that quality for reduced fees (less than small entity fees).
- Post-Grant Review. A new system of post-grant reviews handled by the appeals board.
- Third-Party Prior Art Submissions. Pre-issuance submissions of prior art would be allowed.
- Fees. The USPTO would be given authority to adjust its fees.
B. Patent Litigation Related.
- Venue. Specifies that cases should be transferred to venues that are “clearly more convenient.”
- Right to Trial in Segments. Creates a right to split a trial into segments (infringement/validity; damages; willfulness).
- Enhanced Damages Requirements. Specifies that enhanced damages are for “willful infringement” wherein knowledge alone of the patent is insufficient and that any close case should be decided against willfulness.
- False Marking Lawsuits. To bring a false patent marking claim you would now need to have “suffered a competitive injury.”
- Best Mode Requirement. Best mode would still be required, but failure to fulfill the best mode requirement would no longer be an invalidity defense or a basis for holding a patent unenforceable.
The Senate Judiciary Committee has approved an amended form of S.515. One of the biggest changes to the patent system is the “first to file” system which would replace the current “first to invent” system. This will encourage patent applicants to file earlier to establish an earlier filing date instead of relying upon their date of invention for priority because patent applicants will no longer be able to “swear behind” another patent reference. S 515 as Amended