AIA Cheatsheet
Phase I
Best Mode
“The failure to disclose the best mode shall not be a basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.” The specification must still include the best mode, however, post-issue proceedings are impacted.
Human Organisms as Nonstatutory Subject Matter
An application attempting to patent a human organism (including a human embryo or fetus) is nonstatutory subject matter and will be rejected under 35 U.S.C. 101.
Inter Partes Reexamination Threshold
Transitional one-year period where inter partes reexamination used the same threshold as inter partes reviews. The request for inter partes reexamination must have shown there was a reasonable likelihood the petitioner will prevail with respect to at least one of the claims brought up in the request. This is in contrast to the substantial new question of patentability (SNQ) threshold previously required by inter partes reexaminations.
- Before September 16, 2011 - inter partes reexaminations must meet the SNQ threshold
- On or after Septemeber 16, 2011 until September 16, 2012 - inter partes reexaminations must meet the reasonable likelihood to prevail threshold
- After September 16, 2012 - inter partes reexamination replaced by inter partes review
Prioritized Examination
Applications with no more than four independent claims or thirty total claims (with none of the claims being multiple dependent claims) that pay a fee can request prioritized examination. Accelerated examination is still a tool applicants may use provided they meet the requirements.
- This program went into effect September 26, 2011.
Tax Strategies
Any strategy for reducing, avoiding, or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.
- Effective September 16, 2011 and applies to all patent applications pending on, or filed on or after that date as well as any reexamination or post-grant proceedings on patents issued on or after that date.
Phase II
Citation of Prior Art and Written Statements
Expands the scope of information a party may cite in a patent file to include written statements regarding patentability that were made by the patent owner under certain circumstances. Prior to this change only patents or printed publications could be cited in a patent file. These written statements can be used in ex parte reexaminations in progress and inter partes review and post-grant review proceedings.
- September 16, 2012 is the effective date
Inter Partes Review
This is a new post issuance proceeding that replaces the inter partes reexamination process. Inter partes reviews may only be requested by third parties and may only be requested on the ground of novelty or obviousness of one or more of the claims.
The third party may submit patents and printed publications. An inter partes review will only be granted if there is a reasonable likelihood that the third party will prevail on at least one of the patent claims challenged. This is in contrast to the requirement for a substantial new question or patentability (SNQ) in inter partes reexaminations.
Inter partes reviews may be requested 9 months after the grant of a patent or the issuance of a reissue or after the termination of a post-grant review proceeding if it is instituted and terminated more than 9 months after a patent is granted.
- Effective September 16, 2012 (applies to patents issued before, on, or after that date).
Inventor's Oath or Declaration
An inventor's declaration may be submitted in place of an inventor's oath. Inventors are no longer required to state their country of citizenship. Inventors are also no longer required to state that they believe themselves to be the first inventor. If the inventor is unable to make the oath or declaration under certain situations (deceased, legally incapacitated, cannot be found or reached, or under obligation to assign the invention, but refuses to make the oath or declaration), then the applicant may include a substitute statement explaining the situation. This may function in place of the inventor's oath or declaration.
Non-inventors may file an application if the invention is assigned to him or her. A patent may be granted to the 'real party in interest' when the application is filed by a person other than the inventor.
- September 16, 2012 is the effective date
Post-Grant Review
These proceedings are a new tool that work with inter partes review to replace inter partes reexaminations. They allow for third parties to challenge patents on nearly any ground.
Post grant review proccedings will review the patentability of one or more claims in a patent on any ground that could be raised under § 282(b)(2) or (3). This means the third party may challenge the claim on any ground dealing with 35 U.S.C. 101, 35 U.S.C. 102, 35 U.S.C. 103 or 35 U.S.C. 112 with the exception of the failure to disclose the best mode as this is no longer enforceable in post issuance preceedings.
Post grant review process begins with a third party filing a petition on or prior to the date that is 9 months after the grant of the patent or issuance of a reissue patent. After this time period has ended, the third party may use an inter partes review instead.
A post grant review may be instituted upon a showing that, it is more likely than not that at least one claim challenged is unpatentable. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months).
The third party in a post-grant review is able to submit patents and printed publications as well as other factual evidence or expert opinions challenging any claim of the patent. The patent owner may file a preliminary response to the petition.
- Effective September 16, 2012.
- Applicable to applications subject to the first inventor to file provisions.
Preissuance Submissions
Allows third parties further opportunities to submit documents during the pendency of a patent application. It is limited to the submission of patents, published patent applications, and printed publications. Each document submitted by a third party must include a concise description.
Third party submissions must be sent in before the earlier of either the date of a notice of allowance or the later of 6 months after the date of publication or the date of a first Office action on the merits. They are allowed on nonprovisional utility, design, and patent applications including continuing applications.
- Effective September 16, 2012 and applies to all patent applications filed before, on, or after that date.
Supplemental Examination
A new proceeding that can only be requested by the owner of a patent once it has issued. Any information believed to be relevant to the patent may be submitted. Each request for supplemental examination is limited to 12 items of information.
If the information submitted creates a substantial new question of patentability then an ex parte reexamination will be ordered.
- Effective September 16, 2012 and applies to any patent issued before, on, or after that date.
Transitional Program for Covered Business Method Patents
This is a specific post-grant review proceeding set up for business method patents. These include inventions that claim a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.
- Effective September 16, 2012 and applies to all qualified patents issued before, on, or after that date.
Phase III
Derivation Proceedings
A new proceeding focused on ensuring that the person obtaining a patent is a true invention and did not derive the invention from another. These will be instituted where a dispute over who the true inventor is arises between two applicants. They may only be requested by an inventor who has filed a patent application claiming the same or a substantially similar invention as another applicant. The petition must be filed within one year of the first publication of the invention by the earlier applicant.
- Effective March 16, 2013 and applies to all patents and patent applications subject to the first inventor to file system.
First inventor to file
This change moves the patent system from a first to invent to a first inventor to file system. The applicant must still be an inventor of the claimed invention. However, it is no longer required that the inventor be the first true inventor. The inventor must be the first to file or disclose of the invention publicly. This means the date of conception of the invention is no longer relevant.
- Effective March 16, 2013 and applies to all applications with an effective date on or after that date. It also applies to all the claims of an application when one or more of the claims has an effective date on or after March 16, 2013.
- Applications that do not have a claim with an effective filing date on or after March 16, 2013 are not examined under the first inventor to file system. They will be examined under the first to invent system.
Please make sure to review the 35 U.S.C. 102 hot topics as well as the 35 U.S.C. 102 appendix for more details. There are a lot of details that are incorporated into exam questions on this material.
Statutory Invention Registration
The SIR has been eliminated. This is effective March 16, 2013.
