What technical professionals need to know about the America Invents Act — Part 3
By Moris Amon

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On Sept. 19, 2011, the U.S. Congress passed the Smith-Leahy America Invents Act (AIA). This law will have a profound effect on America's technological future — and, probably, on most of the readers of this newsletter. This series of articles outlines, for the benefit of nonlawyers, the changes it brings to the U.S. patent system. The most important changes can be grouped under three categories:
INDUSTRY PULSE

Is it worth it to jump to the head of line with USPTO's prioritized examination?
  • 1. Yes
  • 2. No
  1. Redefinition of prior art and actions that bar the patentability of a claimed new invention.
  2. New administrative proceedings facilitating challenges to or defense of a patent's validity without recourse to litigation.
  3. Procedural changes to the patent application process.
This article, the last in the series, will cover the third category. The changes brought by the AIA in this category are additions to previous laws and regulations. For the sake of clarity, the relevant procedures will be outlined in their cumulative present form, without dwelling on their historical progression. Note that everything in this article is about utility patent applications — which are probably most readers' only concern.

Applicant's Declaration

U.S. patent law has always required that patent applications include a written declaration signed by the inventors. This principle has not changed under the AIA, but certain implementation details have. Under the AIA, the declaration will have to state that each signatory
  • is an original inventor of the claimed invention;
  • has authorized filing of the patent application; and
  • acknowledges that any willful false statement is punishable by fine or imprisonment of up to five years.
The inventors must state their residence addresses as before, but no longer need to state their countries of citizenship. The word "original" replaces the former "original and first" since first inventorship is no longer necessary in the new first-to-file regime.

Under the AIA, the signature of the declaration can be deferred until allowance (i.e., approval of the patent claims by the USPTO.) This ensures the most correct list of inventors goes onto the issued patent, without the need to amend the declaration. In an original application, if no declaration is filed, the names of the known inventors must be stated on an application data sheet (ADS) for identification purposes.

Another change is that assignees can be applicants, whereas before the AIA, only inventors could be. The applicant can prosecute the application in person or appoint the attorney or patent agent who will do so. The assignment and declaration can be merged into a single document signed by the inventor(s).

Prioritized Examination

In general, the Patent Office examines patent applications in the order they are filed and as fast as examiners become available. Given the large number of applications, and the office's limited personnel, this makes for a slow process. Since Sept. 26, 2011, patent applicants can jump to the head of the line and receive prioritized treatment if they abide by certain conditions.

In the first 1.5 years of this practice, about 8,000 applications were granted prioritized status — out of about 8,500 petitioners — and they reached final disposition (allowance, final rejection or abandonment) in 5.6 months on average, compared to 31.2 months for regular applications. To avoid overwhelming the office, the AIA limits the number of prioritized applications in progress at any given time to 10,000 — which is only a small fraction of the total number of applications.

Here are the key conditions for obtaining and maintaining prioritized status:
  • Submit no more than four independent and 30 total claims.
  • File a complete application from the start. (e.g., do not defer the signature of inventor oaths.)
  • File electronically.
  • Pay all fees in advance with the initial application, including a $4,800 additional fee.
  • Once examination starts, do not take certain delaying actions, such as requesting extensions of time to reply to office actions.
Accelerated Examination

The Patent Office also provides a more economical accelerated examination process for applicants who meet more restrictive conditions. The goal of this program is to complete examination in 12 months — although the office is not legally required to meet this goal.

All applicants who desire accelerated examination must file a "petition to make special" (USPTO jargon). Individual applicants who are older than 65 or have severe health problems are granted "special" status automatically upon presentation of evidence of age or health. All others must fall in one of the eligibility categories below and satisfy the following list of conditions.

Who/what is eligible for accelerated examination:
  • Applicants who are ready to manufacture the patented item.
  • Applicants who have identified present infringement of their presumed future patent rights.
  • Inventions deemed to be of "high importance to mankind" — namely inventions related to environmental protection, energy, superconductivity, AIDS, cancer, recombinant DNA and counterterrorism.
  • Small biotechnology firms for whom the patent in question is a major asset.
  • Applications that focus on a single invention and are accompanied by a prior art search and analysis. (The latter is normally the examiner's job.)
Conditions:
  • Submit no more than three independent and 20 total claims.
  • File a complete application from the start.
  • File electronically.
  • Pay a fee of $150, with some exceptions.
Patent Prosecution Highway

This is a pilot program conducted by the USPTO in cooperation with 24 (at present) foreign national and supranational patent offices. The basic concept is that when a patent claim is found allowable in one office, it can be fast-tracked in the others. The prior art search and analysis of the first office are subjected to minimal review by the subsequent ones to avoid costly duplication. The program is reported to have been successful so far.

Patent Ombudsman

The AIA requires a Patent Ombudsman program to help individual (noncorporate) inventors and small companies navigate the application process. The ombudsmen are facilitators who can answer or direct patent applicants' questions and complaints, and track responsive action within the USPTO organization. They can be contacted via the USPTO website and are supposed to call back within a day.

Micro Entities

The Patent Office has a long list of fees, such as application, petition and maintenance fees. The office recognized before the AIA a class of applicants for whom most fees are reduced by 50 percent. These are the so-called small entities which are defined as
  • independent inventors; or
  • small businesses with less than 500 employees; or
  • nonprofit organizations, including universities in any country
Assignment of patent rights or grant of license to nonqualifying entities by a small entity ends its small entity status.

These provisions of the law are still in place, but the AIA adds a new category called micro entities. These are entitled to a 75 percent discount. A micro entity
  • meets the requirements of small entities; and
  • does not include owners or part-owners of more than four previous nonprovisional U.S. patent applications; and
  • does not include anyone who has gross income more than three times the median household income; and
  • has not assigned its invention or granted a license to someone who does not meet the previous condition.
An alternative to these conditions is that the inventors are all employed by universities physically located in the U.S. In this case, the inventors collectively must be the applicant, not the university.

Further Reading

The material in this article as well as the preceding two is greatly condensed. Readers who need legally reliable and complete sources are advised to search through the USPTO website, which contains an enormous amount of information, including the texts of all the patent laws, regulations and treaties, the entire Manual of Patent Examining Procedure (MPEP) and FAQs on many issues.

Dr. Moris Amon is a plastics industry consultant with 35 years of research and development experience. He is now diversifying his practice into patent law.