On September 16, 2011 U.S. President Barack Obama signed into law (P.L. 112-29) the Leahy-Smith America Invents Act (AIA). The new law represented eight years of tireless efforts by Congress and stakeholders to craft a new bill that makes the most significant reforms to the U.S. patent law system in 60 years.
Key Provisions of the AIA
Some of the key provisions of the AIA include:
- Transitioning the U.S. to a first-to-file system.
- Providing an enhanced grace period for inventors to safeguard patent rights against disclosures made by inventors made one year or less before the effective filing date, which allows inventors to engage in crucial negotiations with potential buyers or investors without fear of losing their right to a patent.
- Consistent with international norms, the definition of prior art now includes non-printed disclosures, including oral disclosures, made available to the public anywhere in the world.
- Providing prior art effect to US patent applications as of their foreign priority dates, thus eliminating the Hilmer doctrine.
- Eliminating the requirement for inventors to set forth the best mode to carry out the invention as a defense in infringement actions or in post grant review.
- Providing 75% discount for patent fees to all applicants that qualify as micro entities.
For additional information regarding the global impacts of the AIA, please see:
- WIPO Article regarding the Global impacts of the AIA
- Director Kappos Presentation About the Global Impacts of the AIA
For AIA's current implementation status see:
Relationship to Global Practices
The changes created by the AIA help the U.S. align with international norms, which provides a renewed opportunity to harmonize the international patent system and facilitate office cooperation through worksharing with international patent offices. Top down alignment of applicable law harmonization coupled with the bottom up convergence at the practice and administrative level worksharing enables offices to increasingly work together to provide a higher quality examination, more predictability in prosecution process, and cost reduction for applicants for examinations around the world. We can no longer afford to ignore new economic realities and the enabling role that the patent system plays. The U.S. has recognized this economic imperative and acted by enacting the first 21st Century patent system. The time is now for widespread international agreement and commitment to making the global patent system simpler, more certain, and user-friendly for all innovators.
For more information about worksharing see:
We will be continuing patent law harmonization talks with our international partners in various upcoming forums. Please contact us for more information at firstname.lastname@example.org.