America Invents Act

Posted On :December 22nd, 2011 By James Yang

The America Invents Act (AIA) which changes major sections of the current Patent Laws became law on September 16, 2011.  Certain provisions become effective immediately while others become effective at a later date.  Click the following link for a schedule of effective dates.  Click the following link for the actual text of the America Invents Act.  More commentary and recommended best practices will follow in the coming months.

Sec. 3.  First inventor to file:  Previously, the United States awarded the patent to the first-to-invent.  Under the AIA, the first-inventor-to-file will be awarded the patent.  In other words, the first inventor to “win the race” to the Patent Office in filing a patent application will be awarded the patent.  The AIA has provisions that allow a junior filer to fight and win over a senior filer provided that the junior filer can prove through a “derivation” proceeding that the senior filer “derived” the claimed invention from the junior filer.  This section of the AIA become effective in 18 months (March 16, 2013).

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Sec. 6.  Post-grant review proceedings: A person who is not an owner of a patent may file a petition for post grant review of the patent within 9 months of the grant of the patent or reissue patent. Different standards are applied depending on whether a petition for an inter partes review or a post grant review is requested.

Sec. 16.  Patent marking: False marking lawsuits are now limited so that only the United States or a person who has suffered a competitive injury may file a false marking lawsuit.  The AIA also provides for virtual patent marking.

Other provisions of the AIA relate to:
Sec. 5.  Defense to infringement based on prior commercial use;
Sec. 8.  Preissuance submissions by third parties;
Sec. 12.  Supplemental examination;
Sec. 14.  Tax strategies deemed within the prior art;
Sec. 17.  Advice of counsel.

I invite you to contact me with your patent questions at (949) 433-0900 or Please feel free to forward this article to your friends. As an Orange County Patent Lawyer, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

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Posted in: America Invents Act, First inventor to file, Post grant review, Virtual patent marking

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