Leahy-Smith America Invents Act Imposes Changes to U.S. Patent Process

Signed into existing law by President Barack Obama on September 16, 2011, the Leahy-Smith America Invents Act (“AIA”) presents the greatest change to the patent statute in over half a century.  Most notably, the AIA aligns our patent system most other developed countries by shifting our patenting system to the “First-to-Invent” system, as well as creates several new post-grant patent review processes among other changes.  The following provides a brief summary of the changes soon to be or already in effect under the new patent regime.

Sweeping Changes to the Patent Examination Process

New First-Inventor-to-File System—Starting early next year for those patent applications filed on or after March 16, 2013, the AIA will transition to the “First-Inventor-to-File” system (or “FITF”)—a major shift from the old regime which previously awarded patents to the “First-to-Invent” (or “FTI”) the claimed subject matter.

Under the new FITF system, the first inventor to file an application will receive a one-year grace period for prior art disclosures made publicly available for one year or less before the effective filing date.  These early disclosures may also serve to inoculate the patent from third-party prior art during the period from the disclosure to the patent’s effective filing date (up to one full year).

The new definition of prior art consists of patents and printed publications that describe the claimed invention or instances where the claimed invention was in public use, on sale, “or otherwise available to the public before the effective filing date.”  Therefore, public availability is now a prerequisite for all prior art.  But the AIA removes previously incorporated geographic limitations, as it is no longer a requirement that knowledge, use, or sales occur within the United States.

Moreover, patent applicants are now permitted to rely on common ownership or joint research agreement provisions to overcome rejections under 35 U.S.C. § 102.

Supplemental Examination—Section 35 U.S.C. § 257 provides for a new post-issuance, supplemental examination procedure for patentees beginning on September 16, 2012, that can be used to “consider, reconsider, or correct information believed to be relevant to the patent.”  Within three months after the receipt of request, the USPTO will make a determination by issuing a certificate indicating whether or not a substantial new question of patentability is present.  If so, then the USPTO will institute an ex parte reexamination proceeding.  This new process is already in effect as of September 16, 2012, and applies to any patent issued on, before, or after the effective date.

Prioritized Examination—A patent applicant may now opt for prioritized examination, which will accord special status during prosecution before the USPTO, with the specific goal of providing a final determination of patentability within twelve months after receiving prioritized status.  Requests for prioritized examination will be limited to 10,000 requests per year, subject to adjustments by the USPTO.

Creation of New Interpartes Proceedings

New Inter Partes” Review—The AIA introduces the new inter partes review” process as a replacement for the previously implemented inter partes patent reexamination.  This new process will be conducted by the Board to review the patentability of one or more claims in a patent upon the grounds permitted by §§ 102 and 103.  Unlike the former inter partes reexamination, a petition for inter partes review begins with a third-party filing of a petition after the later of the termination of a post-grant review or nine months following issuance of the patent.  The USPTO will grant a petition for inter partes review upon a determination that there is a “reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”—a new standard which replaces the previous “substantial question of patentability” standard previously employed for inter partes reexaminations.

Post-Grant ReviewThe AIA creates new a process that allows for any person, including third parties, to petition for review of a patent upon any invalidity theory under § 282(b)(2) and (3) within nine months of the grant or issuance of a reissue of a patent.  Under this post-grant review process, a party challenging the validity of a patent must overcome a rebuttable presumption of patentability by demonstrating that it is more likely than not that at least one of the claims challenged is unpatentable.  In response to any challenge for review, the patent owner will then have one opportunity to amend the claims, as well as additional opportunities to amend allowed claims with the consent of the petitioning party.  This process is now in effect as of September 16, 2012.

Transitional Program for Business Method Patent ReviewThe AIA creates a special transitional program for business method patent review which reviews the patentability of one or more claims in a covered business patent.  This program will last for eight years following its recent date of effectiveness starting on September 16, 2012, and is limited to “covered business method patents,” which the AIA defines as those certain patents that claim a method or apparatus for performing operations “used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.”

Derivation Proceeding—The newly implemented derivation proceeding allows the USPTO to make a determination as to whether “(i) an inventor named in an earlier application derived the claimed invention from an inventor named in the petitioner’s application, and (ii) the earlier application claiming such invention was filed without authorization.”  Derivation proceedings will take effect on March 16, 2013.

Impact on Fees and Practices before the USPTO

Inclusion of Oath and Declarations—35 U.S.C. § 115 now requires the inventor or joint inventor to include with its application an oath or declaration that (i) the application was made or was authorized to be made by the affiant or declarant, and (ii) that such individual believes himself or herself to be the original inventor or an original joint inventor of the claimed invention in the application.  Likewise, the AIA permits those persons to whom the inventor has assigned, or is under an obligation to assign the invention, or who otherwise shows sufficient proprietary interest in the matter, to include in his or her application for a patent an executed agreement  in lieu of filing these statements in a separate oath or declaration.

USPTO Fees—As of September 26, 2011 and in conjunction with the creation of a new Fee Setting Authority, the AIA will increase many USPTO fees by as much as 15%.  The entire list of updated fees is available at http://www.uspto.gov/main/faq/index_feefaq_p.html.

Micro Entities—The AIA establishes a new “micro entity” status for certain patent applicants, which will be distinct from the “small entity” definition found under 35 U.S.C. § 41(h)(1).  The micro entity status, which was made available as of September 16, 2011, will entitle such applicants to a 75% discount on USPTO fees under § 10(a).

Electronic Filing Incentive—The AIA will now essentially penalize applicants by imposing an additional fee of $400 ($200 for small entities) for each original patent that is not filed electronically.

Satellite USPTO Offices—The AIA authorizes the USPTO to open three satellite offices within the first three years of its enactment.  The USPTO states that the purpose of this authorization is to “increase outreach activities, enhance employee retention, improve recruiting, decrease application backlog, and improve examination quality.”

Amendments to Litigation Matters

Misjoinder of Defendants—Under the amendments to the AIA, merely infringing the same patent will no longer be proper grounds to join potential defendants.  Instead, a patent owner may join multiple parties in a single patent infringement lawsuit only if: (i) a cause of action arises out of the same transaction, occurrence, or series of transactions or occurrences, and (ii) there exists questions of fact common to all defendants or counterclaim defendants.

False Marking Claims—The AIA removes the qui tam provision from the false marking statute and now limits standing and damages for filing false marking lawsuits to only those parties that suffer a competitive injury as a result of the alleged false marking.  Damages may now only be collected from the time the alleged infringer was put on notice of another’s patent, which includes marking a product or service with the corresponding patent number.

New “Prior Commercial Use” DefenseFor those patents issued on or after September 16, 2011, the new “Prior Commercial Use” defense now exempts certain subject matter from a finding of patent infringement if the claimed subject matter is “a process, or consisting of a machine, manufacture, or composition of matter used in a manufacturing or other commercial process.”  To qualify for the defense, the party asserting the defense must establish, by clear and convincing evidence, that the prior commercial use occurred at least one year before the earlier of the effective filing date or an inventor’s disclosure that establishes a prior art grace period.

Repeal of the “Best Mode” DefenseThe AIA removes the previously recognized defense to patent infringement claims for failure of a patent to disclose the best mode to practice the claimed invention.  Instead, an examiner may simply reject an application for an inventor who fails to disclose the best mode during prosecution of the application.

Further Studies Regarding AIA Changes to be Conducted by the USPTO

The AIA further directs the USPTO to conduct on-going studies regarding how these changes are being implemented, as well as other patent policies and practices.  The studies will focus primarily on innovation, competitiveness in the United States, and access to capital for small business investment.  The USPTO will then report back to Congress within four years from the date of enactment of the AIA and include any further recommendations for changing patent laws and regulations.

Source: USPTO.gov, “Leahy-Smith America Invents Act Implementation,” available at http://www.uspto.gov/aia_implementation/index.jsp (last visited November 23, 2012).


Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services of the highest quality.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.  Clients include individual inventors, start-ups, spin-offs, major national universities, research institutes and medium to large corporations.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact us 214-445-4021.  Please follow us on Twitter at @chalkerflores.


The law firm of Chalker Flores, LLP is pleased to announce that Edwin Flores, Ph.D., J.D. was recently selected as the 2012 Food for Thought Award Recipient.

Each year the Food for Thought steering committee honors a local civic leader with an Award for significant contributions of service to our community. Prior award recipients include Daryl “Moose” Johnston, former NFL fullback and FOX game analyst; Ebby Halliday, founder and chairman of Ebby Halliday Real Estates, Inc.; and Jim Keyes, the CEO of Blockbuster, Inc.                    

Dr. Flores was born and reared in Mexico City, Mexico and is fully bilingual and bicultural. After completing high school at the American School in Mexico City, Dr. Flores earned his bachelor’s degree in Microbiology from the University of Texas at Austin and his doctoral degree from Washington University in St. Louis in Immunology, both before the age of 26.  Dr. Flores earned his law degree from The University of Texas School of Law.

From May 2005 to June 2012, Dr. Flores served on the Board of Trustees of the Dallas Independent School District representing District 1.  During his tenure on the Dallas School Board, Dr. Flores chaired Committees on Employment Practices and Mediation, Policy, Board Ethics, Business and the STAR Employee Commission.  He also served as the co-chair of the Human Resources briefing where he was responsible for completely revamping the Human Resources division of the school district and the development of a new, comprehensive Teacher Evaluation System. Dr. Flores also served as the 2nd Vice-President of the Board.  Dr. Flores authored the district’s Ethics Policy, Transparency Policy, Schools Closing Policy and Sustainability Policy and co-authored a revised Reduction in Force policy and Leveling policies, which are the first in the State of Texas to allow Dallas ISD to retain its best teachers based on performance.

From December 2005 – December 2008, Dr. Flores served on the Advisory Council of the National Institute of General Medical Sciences of the National Institutes of Health (NIH). Dr. Flores has also recently completed a 4-year term on the prestigious Council of Councils of the NIH.

Dr. Flores has served on numerous community boards, including, the SMU Tate Lecture Series, The Tower Center Board, the Boy Scouts Circle 10 Council, Medical City Hospital Dallas, Good Shepherd Episcopal School and the Dallas Assembly, the Dallas Museum of Nature and SImagecience, the Dallas Historical Society, the Southwestern Medical Foundation.

Dr. Flores is the managing partner and founder of the Intellectual Property law firm of Chalker Flores LLP in north Dallas where he focuses his practice on biotechnology patent law.  Dr. Flores and his wife Jesica (also an attorney) have two children that attend Dallas ISD schools.


About Chalker Flores, LLP:

Chalker Flores, LLP provides intellectual property, business, corporate and litigation legal services of the highest quality.  Founded by Dr. Edwin Flores and Daniel Chalker, additional partners include Scott Meyer, Chainey Singleton and Tom Jacks.  The lawyers of Chalker Flores, LLP provide big-firm expertise with boutique service and pricing.  Clients include individual inventors, start-ups, spin-offs, major national universities, research institutes and medium to large corporations.

If you would like more information about Chalker Flores, LLP, or to schedule an appointment please contact Cynthia Minchillo.