The biggest changes from the America Invents Act will not be seen for some time, several years in some instances. The Act does, however, have a number of provisions that have already gone into effect. I have previously discussed the Prior Use Defense and the Fee Setting Authority.
Inter Partes Reexamination
For all inter partes reexamination requests filed after September 16, 2011, the threshold inquiry for granting such a request has been changed from “a substantial new question of patentability affecting any claim of the patent” to “a reasonable likelihood that the requester would prevail with respect to at least one of the claims” in the patent. This new standard appears to be stricter than the old standard, making it more difficult for requests to be granted. At the end of one year, the PTO will be transitioning away from this proceeding to inter partes review and post-grant review proceedings. Interestingly, ex parte reexamination standards are not changed by this provision.
As of September 16, 2011, “any strategy for reducing, avoiding, or deferring tax liability, whether known or unknown at the time of the invention or application for patent, shall be deemed insufficient to differentiate a claimed invention from the prior art.” The section thus precludes patents for tax avoidance strategies. It does still permit patents for inventions related solely to preparation and submission of tax returns and solely to financial management.
The U.S. patent system will continue to require that patents disclose the best mode for implementing the invention of which the inventor is aware. As of September 16, 2011, however, failure to disclose the best mode is no longer a basis for holding a patent to be invalid or unenforceable.
As of September 16, 2011, no patent may issue “on a claim directed to or encompassing a human organism.” This section applies to all pending applications and later-filed applications, but does not affect issued patents. This section does not change the current law, but merely codifies existing PTO policy. MPEP § 2105 provides:
If the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to nonstatutory subject matter.
In situations where the PTO may be sued in a civil action, such as in an interference or to obtain a patent, the Act changes where such actions must be filed. Previously, such actions had to be filed in the District Court for the District of Columbia. Now, they must be filed in the Eastern District of Virginia.
Track I Prioritized Examination
The AIA gives the PTO statutory authority to enact its earlier proposed Prioritized Examination plan. Prioritized examination went into effect on September 26, 2011. The fee for prioritized examination is $4,800 for large entities and $2,400 for small entities, in addition to the normal filing an examination fees.
More information on the effective dates of the various provisions of the Act is available here.