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AIA Blog

Friday Sep 30, 2011

Welcome to the AIA Micro-site

From: Janet Gongola, Patent Reform Coordinator

Welcome to the microsite for the America Invents Act (AIA)!  As the patent reform coordinator, I am delighted to head the agency’s implementation efforts.  For this inaugural blog report, I want to share an overview of the agency’s plans for implementation of the AIA over the coming months. 

Congress provided for many sweeping changes to the patent law in the AIA.  For example, the United States will move from a first-to-invent system for priority of invention to a first-inventor-to-file system.  Likewise, a third party will have various ways to challenge an alleged “bad” patent apart from a civil action in the courts through three different inter partes dispute procedures in the agency.  But the numerous provisions of the AIA do not all go into effect immediately.  Rather, they become effective in a staged fashion over three distinct time periods—(i) within 60 days of enactment; (ii) 12-months from the date of enactment; and (iii) 18-months from the date of enactment.  This means that patent practice before the agency will not change overnight, but instead in a methodical way. 

We have categorized the various AIA provisions that impact USPTO operations into three groups, reflecting the three different effective date windows.  The chart below shows the three groups of provisions, which we simply call “Group 1,” “Group 2,” and “Group 3,” respectively.  The majority of the AIA provisions in Group 1 have gone into effect, and information about them is already posted on this micro-site.  Information about the Group 2 and 3 provisions will be made available in due course on the micro-site; the agency is currently developing proposed rules and guidance documents for these provisions.  In total for Groups 2 and 3, the agency envisions numerous separate notice-and-comment rule makings in the next 18-months.

Group 1 Rulemakings
(60-day and Under Effective Dates)
Group 2 Rulemakings
(12-Month Effective Date)
Group 3 Rulemakings
(18-Month Effective Date)
  • Reexamination transition for threshold
  • Tax strategies are deemed within the prior art
  • Best mode
  • Human organism prohibition
  • Patent term extension for drugs
  • Virtual and false marking
  • Venue from DDC to EDVA for suits brought under 35 U.S.C. § 145
  • OED Statute of limitations
  • Fee Setting Authority
  • Establishment of micro-entity
  • Prioritized Examination
  • 15% Surcharge
  • Electronic filing incentive
  • Reserve Fund
  • Inventor’s oath/declaration
  • Third party submission of prior art
  • Supplemental examination
  • Citation of prior art in a patent file
  • Priority examination for important technologies
  • Inter partes review
  • Post-grant review
  • Transitional program for covered business method patents
  • First-Inventor-to-File
  • Repeal of Statutory Invention Registration
  • Derivation proceedings

In addition to the provisions of the AIA that the USPTO must implement, Congress mandated the USPTO to conduct certain studies and prepare reports for Congress.  In particular, within the first 12-months after enactment, the USPTO is charged with studying international patent protection for small business, the availability of prior user rights in other industrialized countries, and the impact of a second opinion in connection with genetic testing.

Finally, Congress required the USPTO to establish select programs to aid the public, especially independent inventors and small businesses.  For instance, the USPTO is tasked with reaching out to IP organizations to establish a pro bono program and instituting a “Patent Ombudsman,” both to assist independent inventors and small businesses in securing patent protection for their inventions.  The USPTO is likewise charged with developing methodology to study diversity information for patent applicants and establishing three satellite offices within the next three years.

As the agency promulgates rules, issues guidance, prepares study reports, and establishes new programs, the agency encourages the public to participate in these processes by submitting comments.  There are at least three different ways to do so: 

  • First, right now, you may submit comments by emailing them to aia_implementation@uspto.gov.  Please identify in the subject line of your email the AIA provision, study, or program discussed in your email to enable us to route it appropriately.
  • Second, very soon, you may submit written comments in response to the USPTO’s Notices of Proposed Rulemaking to the addresses provided in the Notice.  
  • Finally, in the coming months, the agency is planning to host a number of hearings and other outreach forums where you may offer testimony about the subject provisions or studies.  We are posting all such events here on the micro-site so that you will be aware of what is happening, when it is happening, and where you can go to be part of our implementation efforts.

In closing, this is an exciting time to be involved in the patent law; we have the opportunity to implement the biggest changes to the system since 1836 together.  We intend to use this micro-site to provide you with the most current information about our implementation activities, including rule makings, studies, programs, and hearings.  We hope you will check it regularly and pass the address along to others to learn about the AIA.  I also welcome suggestions on topics to cover on the micro-site—anything from the information you may find helpful for the agency to post to process we are using to keep you informed of implementation status and updates.

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