America Invents Act

USPTO Implements Final First-Inventor-to-File Rules Effective March 16

February 18, 2013

The USPTO recently published final rules implementing the first-inventor-to-file provisions of the America Invents Act (AIA) that take effect on March 16, 2013.  The full text of the new rules is available here.  The USPTO also published examination guidelines accompanying the new rules which include additional information on how the office plans to interpret the new statute and rules. 


New USPTO Fee Schedule To Take Effect on March 19th

February 7, 2013

On January 18, the United States Patent and Trademark Office (PTO) issued new rules setting and adjusting patent fees. Under the America Invents Act (AIA), the PTO has increased authority to set and change the fees it charges in order to cover its expected aggregate costs of providing services. The PTO has estimated its costs for patent services for fiscal year 2013 at $2.53 billion, and adjusted fees based on forecasts about the number of filings and its costs for rendering particular services. These fees will, for the most part, take effect on March 19, 2013.

Significant fee increases for large entities include:

  o The combined filing, search, and examination fee due at filing is up $340, for a total of $1,600.
  o Excess claim fees are increased to $420 for each independent claim over three and $80 for each claim over twenty.
  o Requests for Continued Examination (RCE) are increased to $1,200 for a first request, and each RCE after that will cost $1,700.
  o Maintenance fees are increased by $3,740 over the life of the patent, to $12,600. The biggest increase is in the 11 ½ year fee, which will be $7,400, an increase of $2,590.

Significant decreases include:

  o The fee for filing an ex parte reexamination request is down over $5,000 to $12,000.
  o Fees for filing for inter partes review or post grant review have been reduced by thousands of dollars.
  o Issue fees are reduced about 45% to $960, but this does not take effect until January 1, 2014. In the meantime, the issue fee is up $10 to $1,780. The publication fee (previously $300) is also eliminated, effective January 1, 2014.

Many fees are reduced by 50% for patent applicants who qualify as a “small entity”, and by 75% for those who qualify for the new “micro entity” status.

The full fee schedule that becomes effective on March 19, 2013 is available here.

New Year Brings New Amendments to AIA

January 3, 2013

With confetti still lingering in the air Congress passed H.R. 6621 which includes many technical amendments to the America Invents Act.  The passing of H.R. 6621 was not without a small amount of controversy as a section dealing with still pending and unpublished pre-GATT applications was ultimately removed from the Bill.  As originally drafted, the Bill would have altered the term for such applications still pending one year from the Bill’s implementation date, effectively killing a majority of pre-GATT applications.  The section was first amended to require only that a report on still-pending pre-GATT applications be sent to congress including the inventor identities, before the Senate removed the section completely in the version ultimately passed by both houses. Some highlights of the Bill that did pass are discussed below.

 Dead-Zones: H.R. 6621 allows inter partes reviews to be filed at any time for issued patents with effective filing dates before March 16, 2013.

 Oath or Declaration: H.R. 6621 allows for an oath or declaration, substitute statement, or assignment, to be filed “no later than the date on which the issue fee for the patent is paid.”

 Patent Term Adjustment: H.R. 6621 clarifies that patent term adjustment accumulates only on “commencement of the national stage under section 371 in an international application.”  The Bill also requires that patent term adjustment be calculated with the issuance rather than at the notice of allowance.  Finally, the Bill clarifies that patent term adjustment decisions may only be challenged by filing in the Eastern District of Virginia.

 Improper Applicant: H.R. 6621 eliminates 35 U.S.C. 373 which restricts who may file international PCT applications at the USPTO.

 Patent and Trademark Fee Allocation: H.R. 6621 eliminates the requirement that patent fees be used to cover “administrative costs of the Office relating to patents” and a similar restriction relating to trademark fees.

 Derivation Proceeding: H.R. 6621 alters the timing for filing a petition to institute a derivation proceeding and includes a definition of the term “earlier application.”  The Bill also clarifies that interferences declared after September 15, 2012 are subject to the pre-AIA provisions of the Patent Act governing the Board of Patent Appeals and Interferences and appeals to the Court of Appeals for the Federal Circuit.

David J. Kappos to Step Down as Director of the USPTO in January 2013

November 28, 2012

The director of the United States Patent and Trademark Office (USPTO) announced earlier this week he will leave the position in January 2013 after holding the position for more than three years. During his tenure, Kappos oversaw the implementation of broad changes to the country’s patent system, including those required by the America Invents Act. Also during this time, the USPTO cut the backlog of unexamined patents from over 750,000 to approximately 605,000, despite an average increase of 5 percent in applications each year. It also reduced the amount of time that it takes to receive a first action on a patent application from 27 months to about 16 months.

Director Kappos made the following statement through the patent office communications staff:

“I believe we have made great progress in reducing the patent backlog, increasing operational efficiency, and exerting leadership in IP policy domestically and internationally … Thanks to the entire USPTO staff for their dedication and hard work. I wish them the very best as they continue their efforts to support the U.S. economy by promoting and protecting innovation.”

The White House has not named a replacement for Kappos.

Woodard Emhardt Attorney Speaks at Purdue’s Office of Technology Commercialization as well as on NPR Station

October 9, 2012

Woodard Emhardt partner Dan Lueders recently spoke to Purdue University’s Office of Technology Commercialization (OTC). Subsequent to the presentation, Dan gave a radio interview regarding the recent changes for the America Invents Act (AIA). Read more about Dan’s presentation and listen to the interview at WBAA Public Radio from Purdue.

Woodard Emhardt Obtains Order Transferring Patent Case out of the ED of Texas

September 28, 2012

Judge Leonard Davis of the Eastern District of Texas recently ordered that a patent infringement lawsuit filed against an Indianapolis based company be transferred to the Southern District of Indiana.  The lawsuit was filed following the effective date of the new joinder provisions of the America Invents Act which prevent Plaintiffs from filing large multi-defendant lawsuits.  The case involved a New York based Plaintiff and Judge Davis found that the Southern District of Indiana was clearly a more appropriate forum.  Woodard Emhardt attorneys Spiro Bereveskos and Bill McKenna are representing the Defendant.

Provisions of the America Invents Act Effective as of September 16, 2012

September 19, 2012

Provisions of the America Invents Act Effective as of September 16, 2012

The America Invents Act (IAI) is now one year old and several important provisions are now in effect.  Some of these provisions are important to both patent holders and anyone who wants to challenge the validity of a patent.  The newly in-force provisions include:

  • Prior art submissions by third parties;
  • Post-grant review of newly issued patents;
  • Post-grant review of covered business method patents;
  • Inter partes review of issued patents; and
  • Supplemental examination


Prior Art Submissions by Third Parties

Third parties may now submit any printed publication of potential relevance to the examination of a patent application.  This allows a third party to let the patent examiner know of relevant prior art that may have a bearing on patentability.  Third party submissions must be filed before a notice of allowance and before the later of 6 months after publication or the date of the first office action (not a restriction requirement).  Submissions must include a brief explanation of why the submitted documents are relevant.

This can be advantageously used as a persuasive brief arguing against patentability.  Third-party submissions of prior art may provide a relatively inexpensive way to invalidate a competitor’s patent before it ever issues.  Businesses should consider a patent monitoring service to monitor published patent applications for business damaging patents.

Inter partes Review of Issued Patents

This new review procedure replaces the old inter-partes reexamination.  Anyone (except for the patentee) can petition for inter partes review of the patent, seeking cancellation of one or more claims based on the claim(s) being anticipated and/or obvious in view of one or more prior art documents (limited to patents and printed publications).  This review allows the third party to participate throughout the process, including comments on any arguments or amendments made by the patentee.  Unfortunately, the Patent Office has set the base government fee for inter partes review at $27,200, making this approximately three times as expensive as the previously available inter-partes reexamination.

Post-Grant Review of Newly Issued Patents

This new review procedure allows anyone (except for the patentee) to petition for post-grant review of the patent, requesting cancellation of one or more claims.  Unlike inter-partes review, the petition for post-grant review is not limited to anticipation or obviousness arguments based on prior art documents.  Post-grant review may also argue the claims are directed toward ineligible subject matter, the claims are invalid because the written-description in the patent is insufficient to support the claims and the claims are invalid as anticipated and/or obvious in view of prior public use or disclosure (as well as any prior art documents).

This provides options for arguing invalidity that were not previously available from the Patent Office (and which otherwise require Federal Court litigation to resolve).  Unfortunately, the Patent Office has set the base government fee for post-grant review at $35,800.  Also, the petition must be filed no later than nine-months after the date the patent was granted.  Due to this short timeframe, businesses should consider a patent monitoring service to monitor for business damaging patents.

Post-Grant Review of Covered Business Method Patents

This new review procedure is a broadening of the post-grant review, as applied to “covered business method patents.”  Post-grant review of covered business method patents is allowed anytime between September 16, 2012 and September 16, 2020 and is not limited by the grant date of the patent.  Only a person who has been charged with infringement of a patent that claims a covered method of corresponding apparatus can file a petition under this procedure.  The petition may be brought under the same grounds as the post-grant review, but with limits on the prior art that may be asserted.

Supplemental Examination

This new review procedure is now available to patent owners to correct mistakes made during the prosecution of the patent.  The patent owner may present any information believed to be relevant to the patent including any ground of patentability, i.e., patent eligibility of the subject matter of the claims, anticipation or obviousness in view of prior art, lack of written description, enablement, best mode and indefiniteness of the claims.  Supplemental examination can be used to cure what otherwise might be considered inequitable conduct during the prosecution of an application, although it is expensive.  A request for supplemental examination requires a total government fee of $21,260, although $16,120 is potentially refundable.

Please contact us here at Woodard, Emhardt, Moriarty, McNett & Henry LLP if you need any assistance with these or any other IP matter.

August 2012 Patent Prosecution Group Luncheon

August 23, 2012

Topics covered in this month’s Patent Prosecution Group Luncheon include a discussion of the USPTO proposed rules for implementing the America Invents Act (AIA) with respect o the new first-to-file standard for applications, submissions to remove references based on common ownership or origination from inventor, and proposed post-AIA examination guidelines.  The group also discussed newly available functionality in Google Patents, including a new “prior art finder” tool for automatically locating prior art references.  To download a copy of the presentation click here.


Will the America Invents Act (AIA) Change Patent Litigation in the Eastern District of Texas?

December 15, 2011

Below is a presentation examining whether the AIA will change patent litigation in the Eastern District of Texas. The presentation explores aspects of the AIA, including changes to joinder, Post Grant Review and Inter Partes Review and how each of these changes in the law may impact patent litigation, particular with regard to the Eastern District of Texas. Click here to download a copy.

October 2011 Newsletter

November 4, 2011


A Summary of the America Invents Act

 On September 16, 2011, President Obama signed into law the “America Invents Act”which makes sweeping changes to the U. S. patent system. Congress’s primary goals were to further enhance opportunities for innovation and entrepreneurial investment, to better harmonize U. S. patent laws with those of other countries, and to streamline patent office procedures.

Read More




  Supreme Court Clarifies Patent Ownership Under Bayh-Dole Act

As a result of Leland Stanford Junior University  v. Roche Molecular Systems, Inc., No. 09-1159, organizations and universities subject to the Bayh-Dole Act should construct more effective assignment agreements with their employees instead of relying on the Bayh-Dole Act to automatically vest title. 

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  Another Reason to Keep Lab Notebooks—Tax Credits Upwards of 7-10%

 Law firms and in-house attorneys are always asking inventors to keep lab notebooks.  There are a number of reasons to keep such documentation, including seeking patent protection, but there is another reason that is often overlooked, substantial tax credits.

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  Trademarks and Copyrights

ICANN Approves New Generic Top-Level Domain Names, Including The XXX  Domain

 ICANN’s Board of Directors has approved a plan to allow an increase in the number of internet address endings, otherwise known as generic top-level domain names (gTLDs).  Currently 22 gTLDs exist, with .com being the most utilized.  However, internet address names will soon be able to end with almost any word in any language, offering organizations around the world the opportunity to market their brand, products, community or cause in new and innovative ways.

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Do you work with copyrights? If so, do not forget about an author’s rights to terminate transfers and licenses.

The copyright act provides the authors of transferred or licensed works the opportunity to recapture his or her rights.  This means that after waiting a specific period of time, an author, or an author’s estate, can terminate a prior transfer or license.  Such terminations can have a dramatic impact on a company’s rights to use certain intellectual property or the rights to revenue from certain copyrighted works.

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A Tougher Standard for Proving Inequitable Conduct?

 In a 6–1–4 decision, an en banc Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company tries to cure the “plague” of inequitable conduct pleadings by raising the bar for proving that alleged bad acts were material to patentability and that the patentee undertook the alleged bad acts with intent to deceive the Patent and Trademark Office.

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 Other Announcements

2011 Midwest Intellectual Property Summit

 The 2011 Midwest Intellectual Property Summit, organized by Woodard, Emhardt attorney, Holiday W. Banta, will be held November 17th and will showcase presentations on the latest research and topics of concern in the field of intellectual property.  Woodard, Emhardt attorneys presenting at the Summit include T.J. Cole, Michael Morris and Spiro Bereveskos

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  Bill McKenna Selected for Indianapolis Bar Association’s Bar Leader Series 

Woodard, Emhardt associate Bill McKenna was selected for the Indianapolis Bar Association’s Bar Leader Series.  The Indy Bar’s Bar Leader Series is designed to develop lawyers for future opportunities in leadership roles in business and legal communities.  Through the series, selected lawyers will learn how to communicate, motivate, inspire, and succeed not only in their law career, but also in service to professional, political, judicial, civic, and community organizations.

Congratulations, Bill!




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