A Look at the Technical Amendments to the America Invents Act (AIA) Made by HR 6621

07 February 2013 PharmaPatents Blog

On January 14, 2013, President Obama signed HR 6621 into law. The title of HR 6621 is “To correct and improve certain provisions of the Leahy-Smith America Invents Act,” but it also makes changes to other provisions of U.S. patent law, including the Patent Term Adjustment (PTA) provisions. This article provides an overview of the substantive changes to the AIA embodied in this law.

Technical Corrections to the AIA

   Changes Relating to Patent Prosecution

  • Inventor’s Oath/Declaration
    HR 6621 pushes the deadline for submitting an executed Inventor’s Oath/Declaration (or Substitute Statement) to “no later than the date on which the issue fee for the patent is paid.” This change will streamline allowance procedures, an eliminate the need for a separate Notice of Allowability requiring an executed Inventor’s Oath/Declaration before a Notice of Allowance can be issued. This change is effective as of the date of enactment (January 14, 2013).
  • U.S. National Stage Applications
    HR 6621 repeals 35 USC § 373 and thus eliminates the requirement that a PCT application have been filed in the name of the inventors in order to be accepted at the U.S. national stage. This change is effective as of the date of enactment (January 14, 2013).

   Changes Relating to Patent Trials

  • Inter Partes Review
    HR 6621 eliminates the Request for Inter Partes Review “dead zone” for patents that are not subject to Post-Grant Review. In particular, the law provides that the timing requirements of 35 USC § 311(c) (including the 9 month waiting period) do not apply to patents that do not fall under the first-to-file effective date provisions of Section 3(n)(1) of the AIA. The law also eliminates the 9 month waiting period for all reissue patents. These changes are effective as of the date of enactment (January 14, 2013).
  • Derivation Proceedings
    HR 6621 rewrites 35 USC § 135(a)(1)-(4) in an attempt to clarify the timing requirements and other provisions. These changes are made retroactively, “as if included in the [AIA],” but derivation proceedings only are available to applications subject to the first-to-file provisions that do not take effect until March 16, 2013.
  • Interference Proceedings
    HR 6621 clarifies that the versions of 35 USC § 6, 35 USC § 141, and 28 USC § 1295(a)(4)(A) in effect as of September 15, 2012 shall apply to interference proceedings commenced after September 15, 2012, with the Patent Trial and Appeal Board deemed to be the Board of Patent Appeals and Interferences. This means that the Federal Circuit still will have jurisdiction over appeals of decisions in interference proceedings.

   Litigation Changes

  • Advice of Counsel
    HR 6621 adjusts the effective date of the changes to 35 USC § 298 to make them applicable to any civil action commenced on or after the date of enactment (January 14, 2013). Under the original effective date, the amended version of this statute only applied to patents issued on or after September 16, 2012.

Patent Term Adjustment

Most of the other substantive changes in HR 6621 relate to Patent Term Adjustment. I wrote about these changes in this article, and will not repeat myself here. However, I will emphasize that patent holders who did not timely file a Request for Reconsideration of the USPTO’s PTA award with the USPTO but want to bring a civil action for additional PTA within 180 days of the patent’s issue date may need to argue that the changes to 35 USC § 154(b)(4)(A) should not be applied retroactively. By operation of the default effective date of HR 6621, those changes would apply to “proceedings commenced on or after [the] date of enactment,” and could be read as requiring the patent holder to have timely filed a Request for Reconsideration with the USPTO before challenging the USPTO’s determination in a civil action.

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