I.Overview of AIA

I.Overview of AIA

A. Major Substantive Changes

(1) First to file – including grace period and fully international definition of prior art

1.Elimination of any geographic restrictions on prior art. Before had to look at if US or International and if it was a public trade show etc.

2.Grace period – its retained and triggered by a provisional application OR an early disclosure

(2) Prior user rights with limitation and exceptions

1.Replaces old 273

2.Expanded to be anyone on any invention

3.Have to be in connection with a commercial use

4.University patents are immune

· Has to be a university patent at the time of patenting – assignment and defense is transferable

(3) Abolition and retention of best mode requirement

1.If don’t disclose, attorney on hook but patent would be okay

2.PTO will be the last deciding factor if people abide by old BM

B. Major Administrative Changes (challenges to patents)

(1) Post-grant review as one of 5 new or revamped admin. Processes that expand the PTO’s powers (§ 3, 6, 12, 18)

(2) Third-party submissions in examination (§8)

(3) Fee increases and fee-setting authority to fund PTO (§ 10, 11, 22)

C. Limited Modifications to Specific Areas

(1) Inequitable conduct – possible admin. Cure through supplemental examination + multiple deletions of the “deceptive intent” in the patent Act

1.It’s a way to supplement for disclosures

2.Patent amnesty program

(2) Tax strategies- deemed within prior art (with exceptions)

(3) Patent marking – immediate abolition of pending and future marking suits

(4) Advice of counsel – failure to obtain advice not proof of willfulness or inducement

D. Limited Modifications to Judicial Procedures

(1) Venue shift – actions against PTO moved from DDC to DEVa (§9)

(2) Overruling of Holmes Group and reinforcement of CAFC’s exclusive jx. (§19)

(3) Limits on joinder in infringement actions (§19d)

(4) Section 145 actions barred for ex parte reexamination appeals (§6(h)(2)