First Inventor To File

The most notable of the changes is the US switching from a First To Invent system to a First Inventor To File. However, this change is not a First To File system which is used in foreign countries. A traditional First To File system is one that requires absolute novelty in order for an inventor to obtain a patent. A traditional First To File system would prevent an inventor from obtaining a patent if there was a prior use or publication of information relating to the invention.

Under the new First Inventor To File system, an inventor has a personal one-year grace period wherein the inventor’s own disclosures, or the disclosures of others who have derived an invention from the inventor, are not considered prior art so long as the disclosure occurred within 12 months of the filing date of a patent application. However, under the AIA, an inventor can no longer swear behind prior art that is dated less than 12 months of the filing date of the patent application. Prior art is now determined by the earliest effective filing date of the patent application, US or foreign. For example, a US patent application that makes a proper priority claim to an earlier filed foreign application will have a prior art date as of the date the foreign application was filed, whereas under the current system, certain statutory requirements must be met in order to determine the relevant date for prior art purposes. The first inventor to file provision becomes effective March 16, 2013.

Pre-Issuance Submissions by 3rd Parties

Currently, third parties are allowed to submit relevant prior art to the USPTO during examination of the application. The AIA now requires that such submission be accompanied with a concise statement indicating why the submission is relevant to the invention. Previously, no such concise statement was permitted to be filed along with prior art submissions. This provision covers applications filed after September 16, 2012.

Post Grant Review

The post grant review, which is similar to opposition proceedings in foreign countries, allows anybody to request a review of the issued patent on any grounds. The request must prove invalidity of at least one claim of the issued patent by a preponderance of the evidence. The request must be filed no later than 9 months after the grant of a patent or reissue patent. However, a request for post grant review cannot be filed if a civil action challenging the validity of the issued patent was filed before the request for post grant review.

Inter Partes Review

Inter partes review has a higher standard of review than a post grant review, such that a third party requesting inter partes review must show a reasonable likelihood of success on the merits of their claims. Inter partes review can only be be filed after a post grant review (if any) has terminated or 9 months after the issuance of a patent or reissue patent. An inter partes review will not be initiated if a civil action challenging the validity of the issued patent was filed before the request for inter partes review. The provisions of post grant review and inter partes review become effective on September 16, 2012.

Prior Use Defense

Prior use is a defense to infringement based on earlier use in the US. The prior use defense, which was previously available only for business methods, requires an accused infringer to prove, by clear and convincing evidence, that it used the patented process, machine, manufacture, or composition of matter in a manufacturing or other commercial process at least one year before a subsequent inventor files for a patent on the same invention. Upon a successful showing of prior use, the accused infringer will have the right to continue using the invention in the same way as long as the accused infringer did not derive the invention from the subsequent inventor. This provision covers patents issued after September 16, 2011.

Micro-Entity

An immediate effect of the AIA is the creation of a new Micro-Entity status which has many of the USPTO fees discounted by 75%. A micro-entity is an applicant who qualifies as a small entity, has not been named on more than four previously filed patent applications, has a gross income that does not exceed three times the median household income, and has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey ownership interest in the application to an entity that has a gross income higher than three times the median household income. A micro-entity can also include applicants employed by an institution of higher education or an applicant that has assigned, granted, conveyed, or is under an obligation by contract or law, to assign, grant, or convey, a license or other ownership interest in the particular applications to such an institution of higher education.

Utilizing our new website, you can review Koppel Patrick Heybl & Philpott’s profile and the main services we are specialized to deliver. We have provided detailed descriptions of our practice areas, to help you assess whether we can meet your  legal needs.  We have also included updated information about our Attorneys and Staff.  I you want to get acquainted with our team, then feel free to visit the Our People page and browse the individual personal information pages.

As a growing law firm, we are always in need of high qualified associate attorneys and patent agents, so please browse our Careers page for information on how to  join our team of professionals right away!

We are once again glad to welcome you our new official website and ask that you please contact us if you do not find the information you are looking for!