House, Senate Pass Changes to America Invents Act and Patent Term Adjustment

08 January 2013 PharmaPatents Blog

The Senate has passed a modified version of HR 6621, which focuses on changes “[t]o correct and improve certain provisions of the Leahy-Smith America Invents Act” and also includes other provisions unrelated to the AIA, such as those impacting Patent Term Adjustment (PTA). The President is expected to sign the bill soon, and it will take effect on the date of enactment, unless otherwise provided.

The AIA Changes

HR 6621 makes several “technical amendments” to the AIA, some simply correcting “scrivener’s errors” and others making more substantive changes.

Inter Partes Review

One of the most significant changes in HR 6621 closes the Inter Partes Review (IPR) “dead zone.” The original IPR statute provides that IPR cannot be requested within the first nine months of a patent’s grant date. This time period will complement the time period for Post Grant Review (PGR), once PGR is available because PGR only can be requested within nine months of a patent’s grant date. But, PGR only is available against certain business method patents and patents examined under the first-to-file version of 35 USC § 102, which does not take effect until March 16, 2013. Thus, under the original IPR statute, patents granted now cannot be challenged in an inter partes USPTO proceeding until they have been in force for nine months.

HR 6621 eliminates this “dead zone” by providing that the nine-months-from-grant requirement does not apply to patents that are not examined under the first-to-file version of 35 USC § 102. (Congress does not shy away from double negatives!)

HR 6621 also eliminates a similar “dead zone” for reissue patents, by providing that the nine-months-from-grant requirement does not apply to reissue patents.  

Inventor’s Oath/Declaration

HR 6621 changes the time period for filing an executed inventor’s oath/declaration (or substitute statement) from “by allowance” to “no later than the date on which the issue fee...paid.” This will greatly simply allowance procedures, and will permit the USPTO to issue a Notice of Allowance even when an executed inventor’s oath/declaration has not yet been filed.

Advice of Counsel

HR 6621 provides that the section of the AIA deeming that evidence of any failure to obtain “advice of counsel” cannot be used to establish willfulness or intent to induce infringement apply to “any civil action commenced on or after the date of enactment” of HR 6621.

Derivation Proceedings

HR 6621 clarifies the deadline for bringing a derivation proceeding, and provides that such a proceeding must be brought within one year of the publication or grant of a relevant claim in the earlier-filed application. This is consistent with how the USPTO had interpreted the original language of the derivation statute.

HR 6621 also defines “earlier application” and re-writes much of the derivation statute in terms of the “earlier application.”

Interferences

HR 6621 clarifies that the USPTO Patent Trial and Appeal Board (PTAB) and Federal Circuit can hear appeals of interferences commenced after the effective date of the AIA’s amendments to § 135(a).

Patent Term Adjustment Provisions

HR 6621 includes the changes to the Patent Term Adjustment statute that I discussed in this article, including changes that I think may be problematic. 

In his speech providing a “section-by-section summary” of HR 6621, Rep. Lamar Smith expressed his views that the district court decision in Exelixis v. Kappos (which I wrote about here) will cause “absurd and undesirable results” that will undermine Congressional goals in adopting a 20-year patent term. (The USPTO has appealed the Exelixis decision.)

Pending, Unpublished Pre-GATT Patent Applications

As I wrote previously, HR 6621 was amended to eliminate the controversial provisions that effectively would have eliminated the term of pending, unpublished pre-GATT patent applications, and instead would have required the USPTO to issue a report on such applications. The Senate took that revision one step further and removed all provisions relating to pre-GATT patent applications.

Effective Date of HR 6621

The default effective date of HR 6621 is its date of enactment, and it will apply “to proceedings commenced on or after” that date, except where it states otherwise.

More Changes Ahead?

In his speech providing a “section-by-section summary” of HR 6621, Rep. Lamar Smith indicated that further changes to the AIA may be under consideration. In particular, he indicated that Congress is considering changing the “raised or could have been raised” PGR estoppel provisions. Additionally, Congress clearly wants to address the problem of pending pre-GATT applications, which is discussed in more detail in this article.

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