LeahySmith America

Invents Act
(AIA)

Presented By: Ishant Kataria &

Suraj Pal Singh

Introduction
The LeahySmith

America Invents Act (AIA) is a United

States federal statute that was passed by Congress and was signed
into law by President Barack Obama on September 16, 2011.
Major changes according to AIA:
First To Invent

First Inventor To File

Interference Proceedings

Derivative Proceedings
Interference proceeding, also
known
as
a priority
contest, is
an inter
partes proceeding
to
determine the priority issues
of
multiple patent
applications.

Derivative
proceeding
is
provided to ensure that the
first person to file the
application is actually an
original inventor, and that the
application was not derived
from another inventor.

Introduction
Ex parte reexaminations are initiated by members of the public, but

The said
LeahySmith
AmericatheirInvents
is aactively
United
once
members submit
request, Act
they(AIA)
no longer
States federal
that was
passed
by Congress
and was
signed
participate
in thestatute
proceedings.
The
correspondence
is strictly
between
the
examiner
and the patent
owner.
into
law by President
Barack
Obama on September 16, 2011.
Major changes according to AIA:
Inter partes proceedings were initiated by members of the public, and

First
To Invent

Inventor To
File
said
members
of the public participate
in theFirst
proceedings.
On
Sep. 16,

2012,
Leahy-Smith
America Invents
these
proceedings

Interference
Proceedings
Act eliminated
Derivative
Proceedings
and replaced them with two new post grant proceedings (Post-Grant

Introduces new PGR (Post Grant Review).

Review and Inter Partes Review).

Retained

existing ex
parte
reexamination,
expanded inter
partes reexamination, which was renamed inter partes review.

Introduction
The LeahySmith

America Invents Act (AIA) is a United

States federal statute that was passed by Congress and was signed
into law by President Barack Obama on September 16, 2011.
Major changes according to AIA:
First To Invent
First Inventor To File
Interference Proceedings
Derivative Proceedings
Introduces new PGR (Post Grant Review).
Retained
existing ex
parte
reexamination,
expanded inter
partes reexamination, which was renamed inter partes review.
Modification in Grace Period.

Compare Pre-AIA And AIA

PRE-AIA

AIA

Switching from First To Invent to First Inventor To File

102(g), 135, and 291 provide for 102(a)(2) precludes a patent if the
proceedings to determine the earlier claimed invention was described in a
Effective from march 16, 2013 patent or patent application naming
inventor.
another inventor and effectively filed
before the effective filing date of the
claimed invention.
The "effective filing date" of a claimed invention is defined to be the
earlier
the actual
date
of ainvention
non-provisional
application;
103
precludes
patenting
of of
an
103
states
that to
a patent
mayfilling
not be
Focusof:
is (i)
changed
from filing
date
actual
effective
if it date
would have
beenearliest
obvious obtained
if the claimed
invention
orinvention
(ii) the
of the
application
to which
the would
nondate
at the time
the invention
was have
been ofobvious
provisional
application
is entitled
to a right
foreignbefore
prioritythe
or
made . . . .benefit as to such claimed
effective
filing For
of example,
the claimed
domestic
invention.
the
effective filing date could be filinginvention.
date of (i) an earlier-filed nonInvention application
in the U.S. isorgenerally
defined
to comprise
two steps:the
provisional
international
application
designating
(1) conception
of the invention
(2)reduction
United
States (benefit
under 35and
U.S.C.
120,121, to
or practiceof
365(c)); (ii) a
the invention.
provisional
application (benefit under 35 U.S.C. 119(e)); or (iii) a
foreign application (priority under 35 U.S.C. 119(a)-(d) or 365(a) or
(b)).

PRE-AIA

AIA
Prior Art

102(a) precludes a patent if, before

invention by the applicant, the invention
was known or used in the U.S. or
patented or described in a printed
Publication
anywhere.
102(b)
precludes a patent if, more than 12
months before U.S. filing, the invention
was patented or described in a printed
publication anywhere or in public use
or on sale in the U.S. On sale is
defined in case law.

102(a)(1) precludes a patent if the

invention was patented, described in a
printed publication or in public use,
on sale or otherwise available to the
public anywhere before the inventors
effective filing date. On sale means
publically on sale.

PRE-AIA

AIA
Prior Art

102(e) precludes a patent if the 102(a)(2) precludes a patent if the

invention
described in
- (1)date
an of
claimed
inventioninvention
was described
in a
What
is was
the effective
filing
a claimed
in a nonapplication for
patent or filed
a patent
patent17,
or 2014
in an claiming
applicationpriority
for patent
provisional
application
on March
to
granted
on application
an application filed
for patent,
by published,
in which the patent or
a
foreign
on March
17, 2013?
another filed in the United States before application, as the case may be, names
the invention by the applicant for patent, another inventor and was effectively
except effective
that an international
the effective
filing in
datethe
of
The
filing application
date of filed
a before
claimed
invention
filed under the treaty defined in section the claimed invention.
nonprovisional application is March 17, 2013, only if the claimed
351(a) shall have the effects for the
invention
supported of
by an
the foreign priority application. The
purposes ofis fully
this subsection
filing
datefiled
of the
foreign
application
in the
Unitedpriority
States application can be the effective
filing
an invention
claimed in an AIA (FITF) application if
only ifdate
the for
international
application
the
subject
of the
claim
designated
the matter
United States
and
was is fully supported in the foreign
priority
publishedapplication.
under Article 21(2) of such
treaty in the English language;

What is the effective filing date for a non-provisional

application filed on March 1, 2013 claiming priority to a
foreign application filed on March 1, 2012?

The effective filing date of the non-provisional application

is March 1, 2013. The filing date of the foreign priority
application isnotthe effective filing date for an invention
claimed in a pre-AIA (FTI) application, but the foreign
priority date may be used to overcome certain prior art
(e.g., pre-AIA 35 U.S.C. 102 (a)).

PRE-AIA

AIA
Prior Art

102(b) provides that an invention is not

prior art if it was patented or described
in printed publication anywhere, or in
public use or on sale in the U.S., one
year or less before the U.S. filing date.
On sale is defined in case law.

102(b)(1) provides that a disclosure is

not prior art if the disclosure was made
one year or less before the effective
filing date of the claimed invention and:
(A) the disclosure was made by the
inventor or someone who obtained the
subject matter from the inventor, or
(B) before the disclosure, the subject
matter was publicly disclosed (e.g.,
published) by the inventor or someone
who obtained the subject matter from
the inventor.

Modification of GRACE PERIOD

At first glance, the grace period appears quite similar to the
current law. However, certain pitfalls make it risky to rely on
the new one-year grace period. With regard to third-party
disclosures, the exceptions apply only to disclosure of
thesamesubject
matter
obtained
from
the
inventor.
Conversely, the exceptions donotapply to variations of the
subject matter. For example, an inventor could disclose subject
matter to a third party and, before the inventor files a patent
application, the third party could disclose an invention or idea
which includes the inventors original idea, but which builds
upon or otherwise modifies it. Now, the third partys disclosure
can be prior art with regard to the original inventors patent
application. Importantly, the original inventor cannot rely on
the date of disclosure to the third party to overcome prior art
in a first-to-file system.

Comparison Between IPR And

PGR

PGR

IPR

PGR may only be instituted within nine An IPR is available nine months after a
months after a patent issues.
patent issues or after the termination of
a PGR.
PGR allows a person, who is not the
owner of a patent, to file a petition with
the Patent Office to institute a review of
the patent based on any ground that
can be raised under paragraph (2) or (3)
of 35 U.S.C. 282(b) relating to invalidity
(i.e., novelty, obviousness, written
description, enablement, indefiniteness,
but not best mode).

IPR allows a person, who is not the

owner of a patent, to file a petition with
the Patent Office to institute a review of
the patent based only on issues raised
under 35 U.S.C. Sec. 102 or 103, and
only on the basis of prior art consisting
of patents or printed publications.

if an inventor knows that a liquid should be heated to 250 degrees

for optimal performance, but discloses in the patent that the liquid
should be heated to "above 200 degrees", then the inventor has
not disclosed his "best mode" for carrying out the invention.

Procedure to File PGR/IPR

Filing of petition by petitioner.
After the petition is filed, the patent owner may file a preliminary response that
sets forth reasons why no PGR should be instituted.
The Director will then determine whether to institute a PGR within three months
after the preliminary response is received or the last date on which the
preliminary response may be filed if no preliminary response is received.
After a decision granting either a post-grant review or inter partes review is
made, the patent owner can file a response and a motion to amend claims
within three months.
Thereafter, a petitioner can file a reply to the response and an opposition to
any amendments within three months.
Next, the patent owner can file a reply to any opposition to the amendments
within one month.

Procedure to File PGR/IPR

After these procedures have concluded, a trial takes place before the PTAB.
Similar to litigation, before the trial, parties are allowed to file various motions,
including motions to exclude evidence.
Ultimately an oral hearing is scheduled, after which, the Patent Office issues a
written, final determination.
Request for Rehearing (i.e. Appeal to the Federal Circuit no later than 63 days
after the date of the final board decision).
Federal Circuit will decide whether PTAB is going about its role properly, e.g.
assessing how evidence put forward by the parties relates to the
preponderance of the evidence standard.
PGR/IPR in comparison to Litigation
Lower cost, lower burden of proof to invalidate, Faster Result, broader claim
scope, among other advantages to patent challengers.

Procedure to File PGR/IPR

Thank You