Patent application filed at USPTO ( United States Patent and Trademark Office) after March 16, 2013 is called an AIA ( America’s Invent Act) application. Such application has no priority claims before March 16, 2013. or we can say if the US application is filed before March 16, 2013 then it is not an AIA application.

But sometimes it comes difficult when post AIA applications claim priority to pre-AIA filings.

Under the new rules, the USPTO also requires that patent applicants help the PTO understand whether a new application should be examined under the AIA.

What is AIA?

On September 16, 2011 the Leahy-Smith America’s Invent Act (AIA) became law.

AIA USPTO patent application

Difference between pre AIA and AIA(America’s Invent Act) application?

 Previously, a second inventor who filed a patent application late could use an interference proceeding to prove that he was entitled to a patent over the first inventor who filed earlier but invented later in time.Now the first inventor to file patent application on the invention will be entitled to patent protection over second inventor who was late in patent filing even though he invented earlier.

Changes in US Patent System

  1. Members of the public will have the opportunity to submit information relevant to patentability that a patent examiner has to consider before grant.
  2. After patent is issued, public can challenge validity of patent.
  3. Naming of an inventor in an application or patent can now be corrected easily irrespective of any contention of deceptive intention. This can easily be done under new supplemental examination proceedings.
  4. Requirement for the inventor’s oath or declaration is reduced.
  5. Correction of oath is possible at any time.
  6. Defect in oath can no longer be a basis for invalidity or unenforceability of the patent.
  7. First time since 1836, the words “deceptive intention” appears nowhere in the act.
  8. New supplemental examination is introduced. It will help assure that only valid patents can be fully enforceable.

Who could invent?

Inventor is defined as the entire inventive entity in cases of joint invention and the sole inventor for a sole invention.

What is claimed invention?

Each of the claims in a patent or an application for patent constitutes its own “claimed invention”. It is the subject matter of a claim in an application or patent.

What is effective filing date?

There is effective filing date for each claimed invention. The effective filing date for a claimed invention is defined as the filing date of the earliest application for which right of priority or benefit is established.

What is AIA non-obviousness requirement?

New § 103 : Conditions for patentability; non-obvious subject matterPre-AIA §103 : Conditions for patentability ; non-obvious subject matter
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negative by the manner in which the invention was made.

 

Analysis:

  1. New term “claimed invention” in place of subject matter is introduced.
  2. New term “effective filing date” in place of time the invention was made. Thus, the date of invention has no meaning to the determination of obviousness.
  3. Obviousness of AIA application will be determined as of effective filling date for the claimed invention.
  4. Identically disclosed or described has now been changed to identically disclosed. Thus all prior art arise from subject matter disclosures. The new §103 does not change the legal standard for non-obviousness except for the changes to what is a disclosure qualifying as prior art to a claimed invention. The new terminology used in new § 103, if anything, makes the law more clear and precise.How to check patent validity of AIA application?

There are four core tests for patent validity:

  1. Sufficient differentiation
  2. Sufficient disclosure
  3. Sufficient definiteness
  4. Sufficient concreteness

How AIA is big opportunity in terms of commercialization?

AIA patents will not be invalidated based on pre-filing secret sales or secret uses. In pre-AIA senario, in a case Hamilton Beach Brands, Inc. vs. Sunbeam Products, Inc. patent was invalidated when the invention was sold or offered for sale more then one year before the filing date.This case involves U.S patent number 7,947,928 assigned to Hamilton. This invention relates to slow cooker, where Hamilton issued the purchase order from supplier Sunbeam more then one year prior.

Also, Non-public prior filings by research partner will not nullify patentability.

How to transform patent application to an AIA patent?

To convert your application to be judged under first to file system,what you can do is simply file continuation-in-part (CIP) application, adding new matter and new claim.

What are the risks associated in transition from pre-AIA to AIA application?

Transformation can result in family of patents, some of which will be pre-AIA and some AIA.

Risk #1 – For transformation to take place we have to add new matter. Later defendants could potentially raise issue of inequitable conduct based on that true intention of patentee was to just interpret patent application under new rules.

Risk#2 – Transformation may be an extra cost burden.Surely, as per new AIA laws patent applications will be more valid but companies has to make sure that its worth the cost spent on filing CIP.

Risk#3- It may rise the issue of double patenting.

Patenting process is now a public process, with public participation in the patenting process both before a patent issues and after grant. It concisely limited “prior art” on which the novelty and non-obviousness of a claimed invention was to be assessed. Nothing
can qualify as prior art absent representing a prior public disclosure or an earlier patent filing naming another inventor that subsequently became publicly accessible—casting aside 175 years of a more complicated, subjective, and uncertain standard for patenting. A new “supplemental examination” procedure was instituted to address any error or omission in the original examination of a patent and bar the defense of patent unenforceability once the procedure has run to completion.

Thus, without question, transparent, objective, predictable and simple are four words that should come to describe the hallmarks of the new patent law arising from this historic legislative achievement.