JANUARY 2013

Congress Bill to Correct and Improve the America Invents Act Likely to Become Law

Written By Stephanus Yang, Esq. Maxey Law Offices, P.L.L.C. s.yang@maxeyiplaw.com www.Maxeyiplaw.com

Page | 2

Congress Bill to Correct and Improve the America invents Act Likely to Become Law
As of January 1, 2013, a bill to correct and improve certain provisions of the Leahy-Smith America Invents Act was approved by the House of Representatives, as amended by the Senate. Before making it to the House, the bill, H.R. 6621, was passed by the Senate with unanimous consent on December 28 2012. While the bill seeks to make several technical corrections to the American Invents Act (AIA), there are still several substantive changes worth noting: Dead Zones Created by the Original AIA Eliminated: the original AIA unintentionally created two time periods where inter partes reviews and post-grant reviews could be filed against a patent, referred to as dead zones; the bill addresses these dead zones by prohibiting a nine-month waiting period for inter partes review from applying to issuances of first-toinvent patents ineligible for post-grant review and by changing the filing deadline for inter partes review to the later of: (1) nine months after the grant of a patent; or (2) the termination date of any post-grant review. Inventors Oath Submission Deadline Extended: while the current law allows a Notice of Allowance for a patent application only after the filing of an inventors oath, the bill extends the time period for an inventor's oath or declaration, substitute statement, or recorded

While the bill seeks to make several technical corrections to the American Invents Act (AIA), there are still several substantive changes worth noting

Page | 3

assignment to be filed up to the time when the issue fee is paid. Changes Made to Patent Term Adjustment Calculations: the bill changes the patent extension period for U.S. National Stage Applications by treating commencement of the national stage as being the same as the filing date of an application filed under 35 USC 111(a); the also bill provides that the exclusive remedy to challenge a United States Patent and Trademark Office (U.S.P.T.O.) decision on a request for reconsideration of a patent term adjustment determination is to file a civil action in the U.S. District Court for the Eastern District of Virginia; additionally, while the U.S.P.T.O. currently provides the patent term adjustment determination at the time the Notice of Allowance is issued, the bill would allow the U.S.P.T.O. to provide its determination of the patent term adjustment before the issuance of the patent. Derivation Proceedings: the bill modifies requirements for applicants filing petitions to institute derivation proceedings and sets forth the criteria to be applied to deem an application as an earlier application with respect to an invention relative to another application. The bill was presented to President Obama on January 3, 2013, and is expected to be signed into law. However, noticeably absent from the bill are two controversial provisions. The first provision proposed to eliminate the patent term for any pre-GATT applications that were still pending. The second controversial provision that was absent from the bill

Page | 4

proposed to narrow the post-grant review estoppel provisions. These issues will likely be brought up for discussion in the future, along with a host of other issues that will emerge as the implementation of the AIA continues in phases.